In today’s fast-paced, innovative-driven world, patent protection of intellectual property is the most vital aspect of this protection. Patent grants inventors and businesses exclusive rights to their ideas, creating incentives for new ideas, as well as a competitive advantage over others. However, even if you own a patent, you may use it lawfully or earn profits from it, or to make a profit from it. This is why patent validity search is critical for inventors, businesses, and investors.
What is Patent Validity Search?
A patent validity search is a consistent evaluation in which an inquiry is made to identify whether an existing patent is valid and enforceable. This inquiry evaluates whether the patent meets the minimum standards for patentability denoting novelty, inventive step (non-obvious), and industrial applicability under the Indian Patents Act, 1970 (sections 2(1)(j), 2(1) (ja), and 64). In other words, a validity search will determine whether the invention claimed in a patent meets the standard of really being new with no disclosure or new creation previously available whether in India or other countries. This inquiry assesses whether the patent will be enforceable in court, thus, protecting the patent holder’s rights.
Why Conduct a Patent Validity Search?
- Reduce Legal Risk
If you enforce a patent that is unenforceable or weak, it can lead to litigation, which can be costly and ruin a reputation. A validity search can identify potential weaknesses, such as prior publications or related patents, prior to enforcing patent rights.
- Informed Business Decisions
Startups, businesses and investors rely on patent portfolios to guide their strategic decisions. A validity search aids in determining the strength and defensibility of a patent which impacts licensing, joint ventures, mergers and acquisitions decisions.
- Assistance in Patent Litigation
Patent infringement actions can be prevalent in competitive areas. Frequently, the defendant claims patent invalidity. A validity search prior to facing a suit can help patent holders to understand possible defenses and improve their litigation strategies.
- Portfolio Management
For a business that manages more than one patent, validity searches can help to identify its weak or vulnerable patents. This enables the company to focus resources towards stronger patents, streamline its portfolio and can make tactical choices on how to exploit or exit (license or sell) that patent.
- Commercial and Strategic Benefit
A proper search will provide comfort, to your investors, partners and other third parties that derive value from your product or service offering, with respect to the market value as well as enforceability of your patent, and spare you the inevitable costs of rebranding, product recalls or licensing disputes related to a battle over who owns what’s left standing.
How does a Patent Validity Search take place?
A full-blown patent validity search typically involves the following steps:
• Prior Art Search: Which involves investigating previous patents, professional associations, technical journals, general scientific publications, as well as investigating public disclosures, to determine whether the invention has been previously disclosed or patented. This investigation may involve both Indian and international databases.
• Legal & Technical Analysis of the Patent Claims: To determine legal compliance, ambiguities, as well as weaknesses of the patent claims.
• Comparison with Other Similar Patents: The researcher would compare other patents in the same area to assess whether a patent was novel and non-obvious.
• Assessment of Patent Scope: The scope of a patent can determine how large or narrow the claim of the patent is, and this will affect the enforcement of the patent, and risk of infringement.
The methods or tools used for a robust patent search are analysis tools that have advanced searching capability like, InPASS (Indian Patent Advanced Search System), WIPO, USPTO, EPO, and specialist analysis software packages. Investigators of patents typically engage a patent attorney to explore the legal angle provided with the search methods, to get a detailed patent validity and non-infringement opinion.
Legal Framework in India
Under the Indian Patents Act, 1970, there are various grounds on which a patent can be revoked and are usually scrutinized during validity search:
• No Novelty/Inventive Step (Section 64(1)(a)): If the invention is not novel or if it is obvious to a person having ordinary skills in the art- the patent can be opposed.
• Non-Patentable Inventions (Section 3): There are inventions that have been completely exempted from patentability, e.g., anything which is nothing but an abstract idea or a mathematical formula and even methods of agriculture.
• Lack of Disclosure (Section 8): Patents are required to adequately write up the detail or information for a person skilled in the art to take that first step and make it. If such an address does not contain a sufficient disclosure, the patent shall be invalidated.
• Prior Public Use or Publication: Where the invention has been put to use by others then there is no invention nonetheless the patent can be revoked on that basis. A validity search may enable a patent owner to pre-emptively address the risks identified above and mitigate potential legal exposure down the road.
Importance beyond the law
Patent validity searches are more than just a legal formality; they have important practical implications:
• Litigation Preparedness: Companies can avoid costly litigation if they already know whether a patent is likely enforceable, it gives them a leg up on the potential costs associated with patent enforcement.
• Investor Confidence: Many startup companies that are seeking investment will need to show their patents are worthwhile; a valid search will provide assurances to the investor.
• Strategic Licensing: Licensing deals with enforceable patents; a validity search would make sure that the patents are strong enough that the licensing deals are worthwhile.
• Innovation Protection: Validity search also demonstrates that competitors will not challenge the patent, prolonging the window for monetization on the innovations.
Conclusion
At Logicize LLP, we think a patent can only be as strong as the ability to enforce it legally. We believe that a patent validity search cannot just be a reasonable measure of caution but a tactical, legal and business necessity. Validity research enables inventors, companies and investors to identify deficiencies in patent rights, further claims, optimise a patent portfolio and build a strong commercial strategy. In the competitive, litigation-heavy marketplace of today, a validity search can be a proactive measure for innovation to mitigate legal risk and maximize the value of the intellectual property that you protect. Logicize LLP believes that integrating patent validity searches into your overall patent filing and intellectual property strategy proves that patents are not just issued patents, but also strong, enforceable and genuinely serve their purpose to protect creativity and create more sustainable growth.
