What is a Patent Invalidity Search?
A PIS or opposition search is to identify patent and non-patent documents that may impact the claims of a specific patent. It can help block patents and establish solidity of a patent portfolio which may be useful for licensing or company acquisition. – “Impact the claims” – means challenge the novelty and inventiveness (i.e., demonstrate obviousness) of the claims of the patent.
Use of Patent Invalidity Search :
An analysis for understanding the strength of patent claims.
A patent invalidity search can be used to manage the viability of an invalidity case when facing a patent infringement suit. Invalidity prior art searches are used to cancel a patent that has been or may be defended. It also may be used to assess the validity of a patent before implementing it pro-actively.
What Do I Need to Provide for a Patent Invalidity Search?
- A patent number and the particular claims which you need to invalidate (unless the entire case set is at issue).
- The target preference date, if different than the priority date listed on the face of the patent.
- Any known prior art that is not there on the face of the patent.
When Should You Conduct a Patent Invalidity Search?
- Upon receiving a patent infringement complaint from a patent owner.
- Upon receiving a cease & desist notice from a patent owner.
- Prior to implementing your patents to determine invalidity risks.
- For pre-issuance submissions, post-grant review (PGR) proceedings, and inter partes review proceedings (IPR) under the U.S Invents Act.
How do you prove patent invalidity?
To prove that a patent is invalid, the defense must attack the copyright based on lack of novelty or non-obviousness—
That is, show prior art that anticipates or renders the patent’s claims visible or prove that sales or disclosure of the patented design occurred more than one year before filing the patent.