We have successfully delivered invalidation reports to clients from different backgrounds including inventors, law firms, manufacturers and organizations across various domains. Our investigative approach and out of the box search strategies helps us find the most difficult prior art search and invalidate some of the toughest cases. Our structured and extensive searching includes:
- Understanding the subject matter: The patent in question is assigned to a team of dedicated engineers. To make your patent invalidation effective, it is critical to have a decent understanding of the patent and know what prior art you are looking for. Before taking any kind of action, our team analyses the patent thoroughly, and cited prior arts also reviewed. Each claim element is analyzed to understand patent scope.
- Establishing the Priority Date: Before start working on a patent invalidity search, the first step is to establishing the priority date of the claims of the patent in question. Any disclosures that are publically available before the filing date of the patent are considered to be prior art. If the patent in question belongs to a patent family, the first applications are also analyzed to discover any new elements that were later introduced in the patent under consideration. It is possible to establish the filing date of that new element as the filing date of the patent.
- Review the file wrapper information: A file wrapper is a written record in a patent office of the application and negotiations for a patent preceding the issuance of the patent. The file wrapper provides a timeline of events of the patent application to grant. The reason this is important is because it provides the reader with a step by step look at the application of the patent, from the beginning to the end where the patent is eventually granted or rejected. Examining this data allows our team to discover more about the claim rejections made by the patent examiner, the rejection grounds, and the recorded prior art in the prosecution history and post-grand proceedings. Our teams also review history of the prosecution, opposition search firm proceedings, and litigation proceedings to gain valuable insight regarding the patent in question.
- Claim deconstruction: Every claim is deconstructed in to their key element without altering the claim language. The deconstruction of claims into key feature is helpful during mapping when the claim elements are mapped to relevant prior art.
- Client Communication: Our analysis of the target patent is shared with the client. Our team discusses the findings from the prior art and file wrapper review and shares their specific approach to challenge the novelty and obviousness of the patent.
- Key words and Classes Extraction: Important keywords are extracted from the deconstructed claim elements. Their technical equivalents and synonyms are also included. Important classes for the class based search are also extracted from the target patent and cited prior art references. These will be utilized to construct search strategy for each claim element.
- Databases: A Machine Based Patent Search and Analysis is conducted using the professional patent databases. Search strings are prepared using extracted keywords and their synonyms//technical equivalents. Boolean expressions are utilized to develop search string which covers the relevant prior arts. Synoptic IP has access to various paid patent databases. These databases house numerous patents and non-patent literature which are otherwise difficult to find on free databases. The search is conducted using paid as well as free databases to ensure overall coverage.
- Combining AI with Human search Skills: Our analysts have access to AI driven search engine and database. The database utilizes neural networks which are trained weekly with new patent filings. This intelligent software assists analysts to uncover relevant and useful information.
- Classification and Citation Search: The relevant classifications such as IPC, CPC and JP F-TERM are identified. Identified classes are paired with broad key strings to capture any additional patents relevant to the domain.
- Citation Search: This step will involve identifying backward citations, forward citations, backward citations of the forward citations, and forward citations of the backward citations of the relevant patents.
- Extended Secondary Search: This step uses the co-cited frequency of the basic patent pairs to assess their similarity. Backward/forward citations of the subject patent/best prior art are matched with the backward/forward citations of all patent applications. The matching frequency gives an overview of relevance to the subject patent.
- Assignee and Inventor based Search: Our search techniques include examining the relevant assigners and inventors in the concerned field. This can help identify potential best competitor patent search company in the market.
- Non Patent Literature (NPL) Search: Non patent literature is any publication or document that is not an issued or published patent application. The NPL search include searching through research journals, books, product disclosures, public conferences, design databases, news, research articles, dissertations, university databases, videos, social media and so on.
- Non-English Sources: Our extensive search methods do not undermine the importance of non-English literature. As ideas can be expressed in any form and language ,our search teams heavily scout the foreign databases and sources for the relevant prior arts.
- Report Preparation: Individual key features are mapped against all the identified relevant prior arts and presented in an MS Word and PDF file along with additional useful information.
- Interim report: Interim reports are also shared to update client on the search progress and initial findings. Any suggestions are incorporated into the search methodology for the final report.
- Custom Reports: Customized reports can be requested as per the client’s requirement.
Read More: https://synopticip.com/essential-strategies-for-prior-art-search-with-synoptic-ip/