Identify Prior Art to Support Patent Prosecution

The validity of a patent can be relevant in two ways; first, someone can challenge the validity of your patent and second, you can question the validity of theirs. Patent validity is an important question when litigation is being brought or considered.

A patent is a set of rights granted by a government that protects an invention. If a patent is given to the applicant, they have the right to block others from making, selling or importing their invention into the country for twenty years from the date of filing.

Prior Art is any evidence of your invention existing before the date you filed your patent application. Prior art can be evidence that an invention – the same or similar to yours – has been demonstrated to the public, written about in a magazine or that there are existing patents related to your invention.

Any references used to invalidate a patent must be from before the date of priority. The date of priority is when you filed your application. For prior art to be relevant, it must have existed before this date.

When you apply for a patent, you are obliged by law to report all known relevant references. Your patent application will also prompt the patent office to perform a prior art search to determine if the invention is novel and non-obvious.

If another inventor or company believes that prior art exists, which would invalidate your patent, they may start litigation against you.

After Infringement:

If you have infringed someone else’s patent, there are a few options open to you depending on how willing the patent holder is to negotiate. The patent holder may agree to sell you the patent or license it out to you for a fee.

Intellectual property laws have been constructed to encourage companies to cross license and come up with solutions to infringement that result in innovations and products. If you have infringed a patent, particularly in error, you stand a good chance of coming to an agreement with the patent owner.

A Blocking Patent:

If no agreement can be reached with the patent owner, then their patent becomes a blocking patent. It blocks or prevents you from manufacturing or selling your invention. In this case, you need to take steps to invalidate their patent.

Patent Validity Search:

A patent validity search is a search of prior art designed to examine all possible areas where information might be found. The search is guided by information about the target patent; the patent which is stopping you from operating.

Claims Mapping:

Claims chart mapping is an infringement analysis. This process involves examining the claims in a patent.

Unlike the invention description, the patent claims can change throughout the process of the application. Inventors usually start off claiming a lot of protection across broad ideas and are told they can’t get that level of coverage. They then narrow down what they are claiming legal protection for in the patent.

An examination of the claims is essential to understand where the prior art may be relevant. This is true whether you are seeking to prove that your patent does not infringe anyone else’s rights or if you think someone else has infringed yours.

Infringement of Your Patent:

A patent validity search can interchangeably be called an invalidity search. The same extensive search for prior art is undertaken but with a view to proving a rival patent invalid rather than ensuring the validity of your own.

In this case, you want to examine any prior art that may invalidate the claims made in the target patent.

NPE Demand Letters:

A demand letter is a letter putting forward a legal claim and demand for restitution. This could come from a rival company who think you have infringed their intellectual property rights, or it could be from a non-practicing entity or NPE.

NPE companies have no products or services. They make money by acquiring intellectual property rights such as patents and using them as a basis for legal action.

NPE companies are bad news because they are only after financial gain and cannot be appealed to on any other grounds. The best way to counter these companies is to deter them from choosing to go after you.

Having a strong and well-protected intellectual property portfolio is central to this strategy. A good claims chart mapping process is in important in this case also.

The Importance of Validity Searching:

Validity searching improves your business on some levels. It can help you to prove infringements and refute accusations of infringements. Both of these actions build the strength of your intellectual property portfolio and make it more valuable. This is true whether you want to use, sell or license your intellectual property.

A strong reputation can be built upon this strong intellectual property portfolio. If rivals and NPEs think you are a soft target, they will commit resources and time to trying to find a problem with your patents. If you have a highly defensible patent portfolio, you will reduce the amount of people who see you as a worthwhile target.

Conduct a Patent Validity Search to:

- Invalidate a blocking patent
- Establish deterrents to demand letters from NPEs
- Carry out due diligence on a patent, patent portfolio or pending patent application