A patent invalidity search seeks to identify prior art that may be used to invalidate the claims of an existing granted patent. Typically, invalidity research is used to defend claims of infringement in that if the claim of the infringed patent can be shown to be invalid, as a result of the existence of prior art, no infringement exists. The research may also be used in support of a petition to initiate an inter partes review of the patent directly with the USPTO.
Invalidity research can be quite expansive depending upon the number of claims sought to be invalidated. In addition, to be effective, an invalidity search must typically go beyond relevant patent applications and grants to include a review of scientific, academic, technical, industrial, trade and business publications. This is due to the fact that the infringed patent has already been examined in light of the patent prior art, reducing the chances of identifying any further invalidating patent publications. This is not to say that that the research won’t be able to identify any further relevant patent publications, rather that the chances are somewhat reduced for these publications. On the other hand, while a review of scientific, academic, technical, industrial and business publications may identify an enabling disclosure that should have prevented the granting of the infringed patent, such a disclosure may be very difficult to find and occasionally amounts to searching for a needle in a haystack. While proving patent invalidity may necessarily be driven by the nature of the claims of the infringed patent, an attack on a select number of independent claims may suffice to invalidate the patent as to the claimed infringement while avoiding the costs of a more expansive claims check. Patent invalidity research then requires a well thought-out plan of attack and highly developed search strategies in order to be effective and efficient.