Validity search FAQs
- When patent Invalidity search or validity search is required?
- How is a patentability search different from validity search?
- How to decide on a cut-off date for validity search?
- What are the other important aspects of a patent validity search?
There are chances where patent office might have granted claims in mistake by overlooking the best prior arts. Hence a patent validity search which is also known as opposition search is required when a client is contemplating asserting, buying, selling or licensing a patent and wants to confirm that the patent is enforceable. With the thorough knowledge of the validity of a patent one can take a better negotiation decision. Various patent infringement law suits depend entirely on validity search.
Both of these patent searches are required for different situations, a patentability search is required to understand if or not the invention in clients mind is patentable or where should one focus his research and development efforts to gain competitive advantage. Whereas a validity search is required to during the merger and acquisition process when a party acquires intellectual property assets of another company and wants to know the value of their intellectual property assets, validity search of patents clearly reviles how strong a patent stand during any future infringement or licensing dealings. A validity search is also required to invalidate a patent which is blocking client’s product due to the huge licensing fees associated with it.
Another most important aspect of a validity search is cut-off date selection, it is very important to discuss the cut-off date with the client. It is important to give due consideration to national patent laws before deciding a cut-off date. Usually patents/ patent applications which are published outside its own jurisdiction, on or before the priority date of subject patent and patent/ patent application published within the same jurisdiction on or before the filing date of the subject patent are considered relevant for a validity search. Cut-off date is sometimes also referred as critical date.
A detailed reading of file wrapper and thorough understanding of prosecution history at the start of validity or opposition search is very important for a clear interpretation of the claim which needs to be invalidated. Apart from this creating exact search strategies using keywords and appropriate classification selection are also very important for a comprehensive validity search.