The most common reason why somebody orders a validity search is the belief that a granted patent has been wrongly granted. In such cases you want to find prior art that proves that. Hopefully, by means of the documents found, the patent in question can be revoked in its entirety, or at least the patent owner can be forced to narrow the scope of the patent.
For us to be able to do as good a validity search as possible, there are a couple of parameters that are very helpful. It is of high interest to know the reason for the search, whether you are alleged to infringe on a granted patent, you have been monitoring your competitors’ patent filings and are ready to file an opposition to a newly granted patent, or maybe you are in need to obtain relevant prior art, which could reject a patent application soon to be granted. An additional cause can sometimes be that you yourself might want to see if there are any documents which could destroy your own patent.
One core parameter is of course to know which claim/claims should be examined, if there are certain claims which are of particular importance to your case more effort can then be focused on them. And another important parameter is which date should limit the search, the earliest priority date, or a later date?
Since there are different demands regarding novelty and inventive step in different situations, it is always a big help for us to know what the results are intended to be used for. Is it maybe to be used for an opposition, a letter, or in a court process?
It is common that the patent in question has documents cited in the search/examination’s reports, as well as other family members which have undergone examination. A big help for us is to know whether you have studied these documents, or if this is something that needs to be done. Any knowledge of previous searches is also of interest, information about where, such as patent classifications and databases, as well as any documents found.
When as many of the parameters as possible are checked the time has come to start the searching, finding, and analyzing. By having the right information, the search process and report can be tailored to your needs, ensuring you will receive a quick and easy overview of the best prior art. Through good preparation we can help you to save time, and that is one of our main goals, to streamline your work, which now begins.
For part 2 of “How to perform a validity search” you can click here.