When it comes to safeguarding or challenging patents, two types of searches play a pivotal role: patent validity searches and patent invalidity searches. Both involve the analysis of prior art, but the purpose, timing, and strategic value of each are very different.
Patent owners employ validity searches to ascertain the validity of their patent claims. Competitors or potential infringers employ invalidity searches to attack the enforceability of the very same claims.
Understanding how these searches work, when to use them, and how they influence litigation, licensing, and business planning is critical to innovators, businesses, lawyers, and investors.
What is a Patent Validity Search?
Patent validity search identifies whether a granted patent is valid if challenged. Patent validity search is usually conducted by the patentee or an interested party such as an investor or a licensee to ascertain the validity of the patent claims.
Why do a validity search?
- So the patent can be enforced in litigation or in licensing discussions
- In order to assess risk before investing in or buying a patented technology
- In order to litigate, where the patent will be enforced
- To confirm critical IP in funding rounds or partnerships
This searching is meant to discover prior art—publicly known information before the date of filing of the patent—that might invalidate the novelty or non-obviousness of the patent claims.
Example:
A medical device firm, before asserting its patent for a new surgical instrument, performs a validity search. The search assures that there is no prior art that would render its claims obvious, and thus it feels confident to go ahead and sue for infringement and obtain royalties.
The outcome of a validity search will generally dictate a legal strategy. Based on what is uncovered during the search, the owner may react by restating the claims in a reissue, or postpone enforcement in hopes of further clarifying the property.
What is a Patent Invalidity Search?
A patent invalidity search is conducted with the aim of invalidating a patent issued to another person—usually a competitor. The aim is to identify prior art existing prior to the filing date of the patent demonstrating the invention was already made public or obvious.
Such a search is generally conducted reactively in response to an infringement allegation by a party or anticipatorily when a company wants to invalidate a competitor's blocking patent.
Common application scenarios:
- Defense of a patent infringement suit
- Filing of a post-grant review or inter partes review (IPR) with the USPTO
- Cross-licensing negotiations by weakening the other side's bargaining position
- Clearing the area to launch a new product
Example:
An electronics firm has been issued a cease-and-desist notice for violating a touchscreen interface patent. The firm, in its defense, employs an invalidity search. The search uncovers a Korean conference paper published before the patent but sharing similar features. The evidence was instrumental in the petition for invalidating the patent in the Patent Trial and Appeal Board (PTAB).
An effective invalidity search can avoid an organization paying millions of dollars in damages and generate market access.
Key Differences Between Validity and Invalidity Searches
Most significant distinctions between invalidity and validity searches
While both forms of search rely on prior art, the environment and purpose are quite distinct.
A validity search is a pre-emptive verification for the enforceability of a patent. It is conducted by the owner of a patent to acquire confidence in the IP before enforcement, licensing, or selling.
An invalidity search is a defensive measure that is reactive, undertaken by a third party or an alleged infringer with the intention of deactivating the legal potency of a patent and eliminating its threat.
Key Differences:
- Validity searches protect your IP.
- Invalidity searches attack someone else's IP.
- Validity is normally carried out before litigation.
- Invalidity is typically used in product clearance or litigation.
- Validity enhances patent value.
- Invalidity diminishes the blocking power of a patent.
Understanding the difference has the effect of aligning your strategy with your position—whether you're enforcing your rights or opposing someone else's.
When to Conduct a Validity or Invalidity Search
Validity Search Scenarios:
- Before enforcing your patent against an infringer
- Before you license your patent to competitors or partners
- During IP due diligence for merger or acquisition
- Before filing overseas, especially those nations with differing standards of patentability
- To enable financing or investor applications, having your IP sorted
Invalidity Search Scenarios:
- After service of notice of infringement or legal notice
- Prior to advertising a product, that it may not violate a rival company's patent
- As part of court or PTAB proceedings defense strategy
- To discredit an opponent's patent portfolio, particularly during negotiations
- To free IP space, in order to innovate without legal jeopardy
The right search at the right time conserves resources, confirms your legal status, and informs business decisions.
How These Searches Enable Patent Litigation and Strategy
During courtroom hearings, these searches tend to remain the deciding factor.
A search for validity, if conducted early, can prevent infringement by stronger patents. It provides legal teams with the confidence to enforce and support claims in court.
An invalidity search, by contrast, is often a lifeline for defendants. If successful, it can end a lawsuit before it begins or shift the negotiation in your favor.
Case Study: Biotechnology Industry
A biotech firm was sued for patent infringement of a genetic sequencing patent. They conducted an invalidity search before the trial and discovered a previously unheard of German-language doctoral dissertation that showed a similar process. It was the basis of their defense. The court ruled in their favor and the patent was declared invalid.
This result not only spared them from legal costs, but also enabled them to pursue R&D without interruption.
Searches have implications for non-litigation approaches, such as:
- IP value of
- Investor due diligence
- Cross-licensing agreements
- Competitive benchmarking
Short of saying that they are flat-out indispensable in offensive and defensive IP strategy,.
FAQs: Patent Validity vs Invalidity Searches
1. Do we need a validity search if the USPTO has already searched the patent?
Yes. The USPTO search is time- and resource-limited. A more extensive, independent search can uncover prior art that was missed under examination, especially foreign or non-patent literature.
2. Is the same prior art usable for validity and invalidity searches?
Yes, the same prior art references can be utilized. The secret to their success is who is utilizing them, and the legal strategy.
3. What are the types of prior art documents?
The prior art comprises:
- Previous patent revelations
- Journal articles
- Conference papers
- Product guides
- Public protests or technical blogs
- Dissertations or theses
Even obscure publications in another language can count if they predate the patent filing.
4. How long does it take to conduct a validity or invalidity search?
Typically, 1–3 weeks, depending on the complexity of the patent, jurisdiction, and how far back the prior art has to go.
5. Is a patent invalidatable based on a single prior art reference?
Yes. Where a single piece of prior art clearly teaches all the elements of one of the claims, it is a ground of invalidation. But most cases utilize combinations of references in assessing obviousness.
6. Are judges heavily reliant on such searches in patent cases?
In fact. Prior art unearthed during invalidity searches is usually utilized as evidence. Courts and the PTAB use it in making their decisions to ascertain if a patent should be enforced or invalidated.
Additional Observations
Such questioning is increasingly important in the transnational patent context, in which products are launched across borders and patent portfolios are managed across borders.
For foreign companies, conducting regional validity and invalidity searches is important. A U.S. valid patent may be invalid in Europe or Asia due to different prior art requirements or patentability provisions.
Furthermore, as the trend of non-practicing entities (NPEs) or "patent trolls" has increased, invalidity searches help honest businesses avoid or fend off abusive lawsuits.
In high-stakes industries like pharmaceuticals, software, and electronics, these searches are not optional—there is a legal and strategic necessity.
Conclusion
Patent invalidity and validity searches are two faces of the same coin.
Conduct a validity search for:
- Highlight your points
- Develop confidence in litigation or licensing
- Reduce risk in fund-raising or M&A
Conduct an invalidity search to:
- Guard against infringement
- Remove competition
- Open space for innovation
They are all critical to smart decision-making and enduring IP policy.
If you are faced with patent litigation, licensing negotiations, or product development in a competitive marketplace, ensure that you are accompanied by careful search analysis.
Need Help with a Validity or Invalidity Search?
Make sure your IP strategy is founded on the firmest ground. Work with experts who possess experience with the subtleties of prior art, international databases, and litigation support. Order a Patent Validity or Invalidity Search at InventionIP
Comments
Post a Comment