Patent Invalidation

A defense against the charge of infringing a patent claim is to show that the existing patents is invalid and was granted in error; due to the existence of previously undiscovered prior art which proves that the claimed invention is not novel or non-obvious.

Why invalidate?

• Invalidity searches can be useful as a defensive tool when a company is concerned about infringing a particular patent
• An invalidity search attempts to uncover issued patents or other published prior art that may render a patent partially or completely invalid.
• In contrast, validity searches can also be used to invalidate an in-force patent thereby allowing a company to practice that technology without paying royalties to the firm that holds the rights to the patent in question

What is required to invalidate?

• Active or lapsed or expired patent/publication
• Non-patent literature
  • Scientific literature
  • Old sales catalogs
  • Trade journals
  • Conference etc…
• The most importantly the priority date of source document should be prior to the priority date of the patent to be invalidated, in case of US
• In case of German, the publication date of source document should be prior to the priority date of the patent to be invalidated

Summary

A validity search can serves as a basis for

• A legal opinion against infringement
• As a due diligence prior to selling or license a patent
• Practice technology without paying royalties, if invalidated