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Patent Blog - Invalidation Search
Posted on: February 11, 2016
A patent essentially relates to an invention in the field of science and technology. It is an exclusive legal right given by the government to the inventor or the assignee for a certain period of time in exchange for full disclosure of invention.
The grant of a patent gives a right to the inventor or the assignee from preventing others from making/selling/using the patented technology in the jurisdiction in which the patent has been granted. The patent may be granted for a machine or process or composition or article of manufacture. Different companies have their own strategies for protecting their IP.
Some companies have strategies for Out Licencing their inventions for others to use it, or sell it, as with any asset. This forms a part of an offensive strategy. By licencing, they can earn Licencing revenue which may include a technology transfer fee due at signing the license agreement, a running loyalty due monthly or quarterly or a minimum guaranteed royalty due monthly or quarterly.
Most of the companies adapt a defensive strategy of forming a legal fence around its technologies which allows the companies to capture market share and also increase its evaluation and market value as patents are valuable intangible assets for the company.
Many times companies will apply for multiple patents for a single invention which will increase intangible assets of the company and provide additional weapons for increasing market share.
Patents help companies to gain higher profit margins on its products as it excludes their competitors to use same technology or launch similar products in market. Assuming there is the demand for the patented product the ability to exclude others reduces the supply of the product or process in the marketplace. As a result, manufacturer can demand higher price as there is no competition in the market.
Patents also reduces competition as it restricts competitors from entering market for the patented product or service. Patentees may assert their patent(s) against competitors to enjoin them from offering a competitive product.
Legal suggestions in IP is the base for important business decisions undertaken by corporations in their day to day operations. IP opinions establishes facts and evidence and provide useful information to the decision maker in establishing the novelty of their technology, analyse competition, understand market potential and then make sound business verdict about operations of company
For making Legal and technical opinion, different type of patent searches and analysis are conducted.
Patent Invalidation search is an important patent assessment analysis undertaken when there is a need to search for any unexpired patents whose claims read on the subject matter. In situations where an existing patent is obstructing the launch of any new product in the market for commercialization than in this case the company that owns the product tries to invalidate the patent application so that the company can go forward and launch its product in the market.
Sometimes patent invalidation searches are also run by many companies to keep an eye on whether any of their patents are infringing any other patents. Invalidation searches requires thorough and comprehensive search in various free and paid databases like LexisNexis, Thomson Innovation, USPTO, EPO, KIPRIS and other databases covering various jurisdictions globally. Also Patent researcher needs to be have in-depth knowledge in their respective domain to cater the requirements.
Section 64 of the Indian patent act outlines circumstances based on which patents can be invalidated during due-diligence activities while commercializing the relevant product.
a) Novelty ground: If the invention is not novel then the patent can be invalidated
b) Obviousness: If the invention is obvious to a person skilled in the art or it lacks the inventive step then patent application can be invalidated based on obviousness ground
c) Subject of the claim of the patent is not an invention: This differs from country to country. Different countries set different parameters for judging subject matters which cannot be patented. If the claimed technology does not fall under the bracket of patentable subject matter, then invention can be invalidated
d) Patent wrongfully obtained by the inventor: At the time of filling or drafting of patents it is important to properly mention the names of the inventors who have worked on the invention. Insufficient disclosure of the inventor details or wrong disclosure of inventor can form the basis for invalidation of patent.
e) Insufficient disclosure of the invention: At the time of drafting of the patent it is necessary to disclose all the informed related to the invention like best mode of carrying out the invention, prior art related to the invention. Any deliberate efforts for insufficient disclosure or description of information related to the invention can form the basis for invalidation of the patent.
f) The claims included in the patent are not fully substantiated by the description provided.
g) Failure to disclose information relating to foreign applications: It is duty of the inventor to disclose information related to any patent application applied in foreign countries.
Determining the invalidation of the patent is a multiple step process that includes the following:
1) Cut-off Date: The cut-off date is the first priority date of the patent. Patents which are published before the cutoff date is only considered for invalidating the target patent. In case of US jurisdiction, patents filed before the cutoff date may be considered to trace their origin parent member back to an early obscure conference proceeding or other hidden source can form the basis for a legal argument against validity.
2) In the next step, searches using keywords and classifications are conducted in combination of various patent and non-patent databases to find the prior art results.
3) Claims of the patents are analysed and mapped. It is essential to give the selected claims the broadest reasonable interpretation and a reporting summary with opinion on the the validity of the patent in question.
At Einfolge technologies, we make sure that we provide most comprehensive search in order to invalidate a patent. Various paid databases like Lexis Nexis is used for searching. Apart from paid database various free databases from different countries like USPTO, EPO, KIPRIS, SIPO etc. are used for patent searching. We also use various classifications like IPC Codes, US classifications, F-Terms etc. for searching patents. We have a highly qualified team of patent analysts who have expertise in versatile domain like chemical, mechanical, life sciences, electronics and so on. We also analyse each element of patent claims carefully and map them on claim chart. In some direct comparison of claim elements is not possible. I that case we will interpret the claims and map them on the claim chart. We have an in-house team of patent translators for all the countries who translate the foreign language patent applications. Our analysis for foreign language patents is based on human translation rather than machine translation. We provide useful inferences and conclusions to clients which will help them in decision making. For us client invention confidentially is very important. Before starting any project, we will sign a NDA agreement. We also have a secure server with many protocols through with the reports and other documents are shared. We are a ISO certified company and our services are being used by many Law firms, Fortune 500 companies globally.
Einfolge Technologies is one of the most active players in knowledge process outsourcing (KPO). It provides a wide range of solutions across various domains. Our Solutions include Patent and IPR, Market and Business Research, Clinical Data Management and Legal Data Assessment.