The Role of Invalidity Searches in Patent Litigation and Post-Grant Proceedings

Obtaining a patent is a notable achievement, and if you are facing an infringement lawsuit, all your dreams could come crashing down. However, patent disputes are more common than you think. According to Statista, in the third quarter of 2023, there were 55 new U.S. International Trade Commission patent infringement investigations in the United States.

When you are facing a lawsuit, you will need to be ready for litigation. This starts with having litigation-ready patent invalidity search reports. It’s one of the only ways to get your business through the foggy waters of patent disputes. It is usually one of the first steps in the direction of securing your patent’s validity in post-grant proceedings like litigation.So, knowing as much about patent invalidity searches as possible can help you make an informed decision. Here’s what you need to know.

What is a Patent Invalidity Search?

A patent invalidity search is a thorough investigation to help find prior art that could potentially invalidate a patent. Most other patent searches focus on ensuring the novelty of an invention. An invalidity search is more like thorough detective work as it looks for the missing puzzle pieces in a vast ocean of existing knowledge.

Patent invalidity searches are meticulous. These searches often cover patent and non-patent literature like scientific journals and other public documents and aim to find prior art that the patent office may have overlooked during the initial examination. Naturally, it is one of the most critical steps in post-grant proceedings, especially during a patent litigation.As you can imagine, these searches require technical experience and legal acumen. Most people rely on skilled, experienced patent litigation lawyers in this regard. They are well aware of the latest patent laws and technology to help you ensure a thorough investigation.

Role of Invalidity Searches in Patent Litigation

One of the most well-known uses of patent invalidity searches is in litigation. When another patent holder and/or competitor files a claim alleging infringement, you will often need this type of search to counter the argument. It will help you identify a prior art that could invalidate the patent in question. It’s the cornerstone of your patent dispute.

How Does an Invalidity Search Work?

A ‘successful’ invalidity search can reveal that the patented invention was either already known or obvious before its application. This means, if the search fails to find any evidence, the patent remains valid. If you’re the defendant, you actually want the search to fail, but as the plaintiff, you would want it to succeed. A patent litigation attorney will use this evidence to significantly weaken or dismantle a claim.

However, the impacts of invalidity searches are far-reaching. This search result can also influence broader patent strategies. Many companies use these searches to negotiate settlements and product or design licenses. In some cases, you can use these searches to deter future litigation.However, as mentioned, you will need to hire a skilled patent litigation lawyer as soon as possible. They will help you understand the intricacies involved in your case.

Best Practices for Conducting Effective Invalidity Searches

To conduct a proper patent invalidity search, you need a meticulous and strategic approach to ensure success. Here are a few of the best practices you need to keep in mind:

• Define the Scope Clearly: Start by defining the scope of your search. You will need to understand the technical aspects of the patent in question. But you also need to identify the key claims that require investigation.
• Utilize Diverse Sources: Search beyond traditional patent databases. You must include non-patent literature like scientific journals, technical papers, and conference proceedings. Also, look into international databases to capture a global perspective of prior art.
• Use Advanced Search Techniques: Use keyword searches, classification-based searches, and citation analysis to leave no stone unturned. Incorporate Artificial Intelligence and machine learning tools to enhance the depth and breadth of your search.
• Hire Experienced Attorneys: Collaborate with professionals like patent litigation attorneys who have experience in both the technical field of the patent and patent law. Consider inputs from industry professionals for insights on lesser-known publications and historical technologies.
• Analyze Results Thoroughly: Meticulously review and analyze the findings to determine their relevance and potential impact on the patent’s validity.
• Document the Process: Maintain detailed records of the search process and findings. This documentation is critical, especially if the search results are to be used in legal proceedings.

Contact the Intellectual Property Attorneys at ETB Law to Help You With Patent Invalidity Searches

As you can see, a patent invalidity search is at the heart of patent litigation and post-grant proceedings. It’s a strategic tool that can decisively influence the outcome of patent disputes. Whether you are an individual or a company protecting your intellectual rights, you need to know about this search. In some cases, it’s your only way to enforce the validity of your patent. Let ETB Law help you stay ahead in the intellectual property game. Reach out to our experienced patent litigation lawyers for tailored advice and support. Contact us today for more information.