Invalidation Search – Prior Art not the Only Way

I hope we have already discussed about few methods of invalidation here

I have been repeatedly focussing on the point that prior art search is not the only way of invalidating a patent. So I thought of summaring all the ways that can lead to invalidation of a patent:

● Maintenance fees aren’t paid
● It can be proved that the patent either (a) fails adequately to teach how to make and use the invention (b) improperly describes the invention (c) contains claims that are legally inadequate (one example has been earlier described here)
● One or more prior art references (earlier patents or other publications) are uncovered which show that the invention of the patent wasn’t new or wasn’t different enough when the invention was made the patent owner is involved in certain defined type of illegal conduct, that is, commit antitrust or other violations connected with the patent
● The patent applicant commited fraud on the Patent Office by failing to disclose material information, such as relevant prior art references, to the patent office during the period when the patent application was pending.

Thanks to Patent it Yourself for providing a ready summary. A very nice book for inventors (I must say).

Therefore, the analyst who is conducting the search should not limit his mind to identifying prior art references but he can also identify other facts that can contribute towards invalidation.

Happy Hunting!!…

Invalidation Search – Products

As we have discussed earlier, patent literature is not the most important mode to invalidate a patent. Products that are present in the market (from sometime) also forms a very good prior art for invalidating the patent.

I agree that not many products mention the process/methodology that are used by them internally, leave apart the technical specification available on website (as its not available for all products). Further, it becomes more important in those cases where you believe that the product must be using the technology of as claimed in the patent but you have no proof to prove the assumption.

I am assuming here that the relevant text is not available from the specification of the product as well as not much information is available on Google.

A technique that can be used in such cases to check for some references it to search on slideshare or Youtube. Since Google is not able to provide results from these websites they are always left behind.

Now, why to search in these websites. There are many inventors, R&D people, professors etc. who host their presentations or talks on these websites. If these people are connected with some product they even provide information on the technology that is being used in the product. Thats what we are looking for!!!…

Most importantly this also becomes a very important strategy for infringement analysis or licensing deals or claim charts or patent valuation etc.

Invalidation Search – Single Result

There is a lot of difference between providing one good result and all good results.

Majority of the new analysts that work under me are very happy when they get one good/relevant result in an invalidation search. Thereafter they work in peace and doesn’t stress much for more results as they are happy that they have invalidated the subject patent.

No!!

That is not what i’m looking for, or what the client wants. What I am interested in is identifying all the relevant patents that exist in the art. All the patents that can invalidate a patent.

This is what makes a case strong.
This is what that makes you win or loose a case.

So if you are doing an invalidation search, make sure you have all the BANG-ONs!!