Patent invalidation:
defend a patent claim to show that the existing patent is invalid and was granted incorrectly. This is done by discovering a record showing that the claimed invention is not novel or obvious.
Why do people invalidate?
* Invalidation search is a defensive tool used by a company when it is infringing a patent
* Is what a company does to practice a technology without paying royalties to the assignee who owns the patent rights to be invalidated.
* It can be used by a company to know if someone is infringing its patent.
Patent nullity procedure:
a) Retrieve the international search report of the patent to be invalidated and verify the patents listed therein.
b) Background study
1) Read the patented invention or the invention to be invalidated in its entirety.
2) Gain a thorough understanding of the invention by referring to the drawings.
3) Locate the inventive step of the patent to be invalidated
4) Prepare mental maps or flowcharts of the study you have done so that you can later remember
5) Search through Google and other databases to get different possible terms for the inventive steps
6) Hold a brainstorming session
c) Elaboration of taxonomy or technology evaluation parameters
1) Locate step by step procedure
2) Select the claims to be invalidated
3) Divide the claims into parts.
4) Write the broken parts of the claims in simple language to facilitate their understanding and analysis.
5) Prepare a mind map or flowchart of the taxonomy
d) Preparation and search for keywords
1) Geographic conditions: Restrict the search with the priority date if the target patent is a US patent. (Note: If you are invalidating a European patent, the publication date of the source patent must be earlier than the priority date of the destination patent)
2) Use appropriate databases to search
3) Search developing the search strategy using the area of application of the invention or the elements.
4) Search developing the search strategy using the problems of inventions
5) Search by preparing the search strategy using the solutions of the invention
6) Use different synonyms of the elements or steps of the invention
7) Locate the relevant International Patent Classifications (IPCs) and search with them
8) Try to search using broad queries first, then use more specific queries if you find the results are on target.
9) Modify queries if search results are vague or inappropriate
10) Search using the keywords that match different technical possibilities of the elements of the invention
11) Try to get into the areas where the invention can be applied alternatively or think outside the box. Strategize using those areas and look for
12) Change databases accordingly
13) Use appropriate database operators to formulate queries
14) Change the query scope accordingly. For example: claims or (title and abstract) or description, etc. Depending on the databases
e) Analysis
1) Look at the title and abstract and decide if the document is on target or not.
2) During this decision, consider checking in on the target if you find it minimally relevant as well
3) Always keep in mind the steps of the invention
4) Use diagrams which is considered a universal language for analysis
5) Try to interpret the steps in the context of the document you are studying if the section of the document seems to be relevant
6) Try to write the analysis in the context of the statement or part of the statement you are working on.
7) If you find most of the elements in a document, read it more carefully to find the rest. This is to prove that the document is an X attack.
8) Be patient when analyzing the documents
9) Mark the relevant areas of the analysis in a pdf file, so that it is easy for the client to understand
10) Prepare the analysis sheet in a more interactive and easily understandable way
