Procedure To Kill A Patent In The Battlefield

Patent invalidation:

defensing a patent claim to show that the existing patent is invalid which was faultily granted. This is done by discovering a record which proves the claimed invention is not novel or non obvious.

Why people invalidate?

* Invalidation search is a defensive tool used by a company when it is infringing a patent

* It is performed by a company to practice a technology without paying royalties to the assignee that holds the rights of patent to be invalidated.

* It can be used by a company to know whether someone is infringing his patent.

Procedure for patent invalidation:

a) Retrieve international search report for the patent to be invalidated and check the patents listed there.

b) Background study

1) Read the patented invention or the invention to be invalidated thoroughly.

2) Get in depth understanding of the invention by referring to the drawings.

3) Locate the inventive steps of the patent to be invalidated

4) Prepare mind maps or flowcharts of the study you have done to later recall

5) Search through Google and other databases to get different possible terms for the inventive steps

6) Conduct a brain storming session

c) Preparing taxonomy or technology assessment parameters

1) Locate step by step procedure

2) Select the claims that is to be invalidated

3) Break the claims into parts.

4) Write the broken parts of the claims into simple language for easy understanding and analysis

5) Prepare a mind map or flowchart of the taxonomy

d) Keyword preparation & Searching

1) Geographic conditions: Restrict the search with the priority date if the target patent is a US patent. (Note: If you are invalidating an European patent then the publication date of source patent should be prior to priority date of target patent)

2) Use appropriate databases to search

3) Search by preparing the search strategy using application area of the invention or the elements.

4) Search by preparing the search strategy using the problems of the inventions

5) Search by preparing the search strategy using the solutions of the invention

6) Use different synonyms of the elements or steps of the invention

7) Locate relevant international patent classifications (IPC) and search using them

8) Try to search using broad queries first, then use more narrower queries if you find the results are on target.

9) Modify the queries if the search results are vague or not appropriate

10) Search using the keywords that matches different technical possibilities of the elements of the invention

11) Try to get into the areas where the invention can alternately be applied or think out of box. Make strategies using those areas and search

12) Change the databases accordingly

13) Use appropriate operators of the database to formulate the queries

14) Change the scope of the queries accordingly. For eg: claims or (title & abstract) or description etc. Depending on the databases

e) Analysis

1) Look into title & abstract and decide whether the document is on target or not

2) During this decision, consider the record on target if you find it minimally relevant also

3) Always keep the steps of the invention in your mind

4) Use diagrams which is considered to be a universal language for analysis

5) Try to interpret the steps in context of the document you are studying if the section of the document seems to be relevant

6) Try to write the analysis in context to the claim or part of the claim that you are working on

7) If you find most of the elements into a document, then read it more carefully to find the rest. This is to prove that document as an X attack.

8) Be patient while analyzing the documents

9) Mark the relevant areas of the analysis in a pdf file, so that it is easy for the client to understand

10) Prepare the analysis sheet in more interactive and easily understandable manner