Patent litigation can bankrupt a company. Litigation tends to cost millions of dollars in attorney fees, months or years of prep work, and enormous uncertainty. One of the tools that can provide companies with clarity before entering a courtroom is a patent invalidity search.
The process reveals prior art that can make a current patent unenforceable. Whether you're fending off an infringement allegation or about to assert your own patent, an invalidity search can radically change the result of the case. We'll describe in this article why one is so important before litigation, how it is conducted, typical errors to steer clear of, and actual examples whereby it was decisive.
What Is a Patent Invalidity Search?
A patent invalidity search explores earlier art to see whether an issued patent must be invalidated. Prior art encompasses anything that is available to the public prior to the filing date of the patent—like prior patents, published applications, research reports, technical manuals, or even product manuals.
It is meant to rebut novelty or non-obviousness, two of the major requirements for a patent's validity. If earlier art proves the invention to be not so new or an obvious development, the patent can be invalidated in court.
Unlike patentability search, which analyses if a new invention is patentable, invalidity searches target issued patents.
They are applied most frequently in:
- Litigation: To counter infringement actions.
- Licensing negotiations: To check the validity of a patent before agreements are signed.
- Mergers and acquisitions: To evaluate if a patent portfolio possesses enforceable value.
By exposing latent vulnerabilities in a patent, invalidity searches function both as a shield and a sword in business strategy and law.
Valid Reasons for Conducting an Invalidity Search
Reducing Legal Risks
Litigation courtroom warfare is an unknown variable. A good case can be derailed by unexpected prior art during trial. By performing a patent invalidity search upfront, companies minimize the risk of being blindsided.
For instance, an infringing company might feel cornered at first. However, if the search yields prior art that invalidates the competitor's patent, the defendant can contest the enforceability of the patent. This minimizes risk and maximizes confidence in their litigation approach.
Savings in Litigation Costs
Patent litigation is the costliest form of legal action. Research indicates that the average cost runs into tens of millions of dollars for trial-worthy cases. An invalidity search, which may cost much less, could avoid unnecessary expense.
If the search would indicate that a patent is most likely invalid, companies can avoid trial altogether. They might opt for settlement, dismissal, or even counterclaims that deter the other side from going to litigation.
Bringing More Strength to Negotiation
Settlement is not uncommon in patent cases, but the side with more evidence typically gets leverage. An invalidity search gives that leverage.
For example, if a defendant is able to provide clear prior art that challenges the validity of the patent, the patent owner will be willing to pay less in settlement.
Conversely, a plaintiff with a validity-confirmation search at hand can negotiate more substantial licensing conditions. Either way, the invalidity search serves to shift the balance of negotiations in the knowledge party's favor.
When Do You Perform an Invalidity Search?
Timing is everything. You should ideally perform an invalidity search:
- Prior to lawsuit filing: Claimants can experiment to see if their patent is enforceable prior to litigation commitment.
- Upon receiving a complaint immediately: Defendants usually get searches done immediately upon receiving allegations of infringement.
- While negotiating licenses or settlements: Both sides employ invalidity searches to aid in negotiation planning.
- When conducting due diligence: Buyers and investors examine patent enforceability prior to acquisition agreements.
Performing the search upfront enables sides to craft legal strategy based on the strength—or lack thereof—of the patent at issue.
Most Significant Steps in Performing a Patent Invalidity Search
- Establishing scope: Determine which patent claims are most applicable to the dispute.
- Searching the world: Use patent databases, non-patent literature, academic publications, and product documentation.
- Examining prior art: Compare each item of prior art against the patent claims.
- Mapping results: Develop claim charts to indicate overlap or conflict between patent and prior art claims.
- Document preparation: Document findings with concise references and technical information.
- Legal integration: Collaborate with attorneys to integrate findings into litigation plans.
Professional search companies will utilize sophisticated algorithms, multilingual searching, and technical professionals to make sure no prior art is missed.
Examples and Case Studies
Example 1: The Defensive Strategy
A small electronics firm was sued for patent infringement on a competitor's wireless communication patent. They were facing possible damages of more than $5 million. Prior to acting, they commissioned an invalidity search.
The search revealed a little-known Japanese patent publication many years previously, detailing the same technology.
Armed with this information, their lawyers made a counterclaim. The other side discontinued the suit within months, sparing the company millions of dollars in legal fees.
Example 2: The Offensive Advantage
- A software company was going to enforce its patent against a bigger rival.
- Prior to filing, they ordered an invalidity search on their own patent.
- The results indicated older research articles that would jeopardize their argument.
- With this information, they stayed out of expensive litigation and instead pursued licensing alliances, conserving resources and maintaining a reputation.
These examples show how invalidity searches influence results by revealing possibilities and pitfalls.
Common Mistakes to Avoid
- Oversight of foreign prior art: Numerous patents are submitted across many regions. Forgetting about foreign sources can lose valuable evidence.
- Omitting non-patent literature: Technical publications, convention materials, and user manuals may be as hurtful as patents.
- Failure to limit claims: Broad searches are unfruitful. Focused searches based on particular claims work better.
- Not consulting legal experts: Even solid technical results require legal structure to be helpful in court.
Steering clear of these errors guarantees that an invalidity search returns accurate, usable results.
Other Uses Outside of Litigation
Patent invalidity searches are not reserved for litigation.
They offer value in:
- Licensing: Companies licensoring patents can verify if patents are their worth.
- Portfolio management: Companies can find weaker patents and choose to keep or drop them.
- R&D strategy: Engineers can steer clear of developing already described technology in prior art.
- Investor confidence: Startups looking for financing are able to utilize searches to demonstrate that their patents can be enforced.
This expanded use positions invalidity searches as a central aspect of strategic patent management.
FAQs On Patent Invalidity Searches
Q1: How long does it take to conduct a patent invalidity search?
The majority of searches take 2–4 weeks, subject to patent complexity and jurisdiction coverage. Complex cases could take longer.
Q2: What is the cost of an invalidity search?
Fees are variable, but typically much less than litigation costs. They are regarded by many firms as a risk-reduction investment.
Q3: Who carries out patent invalidity searches?
These are usually undertaken by professional search companies, frequently with technical and legal backgrounds. Assurance of results in line with legal strategy is provided through liaison with patent lawyers.
Q4: Can invalidity searches ensure success at court?
No. They give evidence but results are subject to interpretation, presentation, and the judges' discretion. But they do dramatically support arguments.
Q5: What if no prior art is discovered?
If no prior art is uncovered, it means the patent is robust, and the owner has more assurance in enforcing it.
Final Thoughts on Preparing for Litigation
Patent litigation is risky business. The financial and reputational damage of going to court unprepared can be ruinous. A patent invalidity search gives companies the knowledge they require to determine whether to battle, settle, or abandon.
It mitigates risk, conserves resources, and enhances negotiating leverage, giving you a better idea of what's at stake. Whether you're a defendant who wants to avoid paying damages or a patent owner gearing up to assert your rights, missing out on this step is an expensive error.
Safeguard your business and bolster your litigation plan with a professional Patent Invalidity Search
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