How do you do an Invalidation Search in a Patent Infringement Case?

 Uncover Prior Art to Challenge Patent Validity Effectively

When facing a patent infringement case, one powerful defense strategy is to challenge the validity of the patent in question. This is where an invalidation search (also called a validity search) comes into play. The objective is simple but critical: find prior art that proves the patented invention isn’t as novel or non-obvious as claimed.

But how exactly do you conduct an invalidation search? Here's a step-by-step guide that walks you through the process in a strategic and structured way.

What Is a Patent Invalidation Search?

A patent invalidation search is an in-depth examination of existing knowledge—called prior art—to identify publications or uses that can potentially invalidate a granted patent. This could include:

  • Earlier patents or patent applications

  • Scientific literature or journal articles

  • Products or public demonstrations

  • User manuals, white papers, or even websites

The goal is to prove that the patented invention was already known or obvious before the filing date of the challenged patent.

When and Why Is It Done?

Invalidation searches are most commonly used in:

Challenging the validity of a patent can potentially halt an infringement case, save millions in damages, or even invalidate a competitor’s strategic IP asset.

5 Steps to Conducting a Patent Invalidation Search

1. Understand the Claims You Are Challenging

Start by carefully reading the independent claims of the patent you intend to invalidate. Claims define the legal boundaries of patent protection.

Ask:

  • What features are essential to the claim?

  • Are there functional or structural limitations?

  • What is the filing and priority date?

The goal is to invalidate the claim as a whole or show that it would have been obvious in light of existing knowledge.

2. Identify Relevant Prior Art Types

Prior art can take many forms, including:

  • Patents and published patent applications (global)

  • Non-patent literature (NPL): technical journals, books, conference papers

  • Public disclosures: user manuals, videos, blog posts, product catalogs

  • Commercial use or public display before the patent’s priority date

Note: In many jurisdictions (like the U.S. and Europe), prior art must be publicly accessible before the priority date of the patent in question.

3. Use the Right Databases and Tools

A strong invalidation search combines patent and non-patent literature sources:

  • Patent databases:

    • Google Patents

    • USPTO, EPO (Espacenet)

    • WIPO Patentscope

    • Derwent Innovation or Orbit (for advanced users)

  • Non-patent sources:

    • Google Scholar, IEEE Xplore

    • Scientific journals, archives, and repositories

    • Product databases or archived websites (e.g., Wayback Machine)

Tip: Use Boolean operators, classification codes (CPC/IPC), citations, and keywords strategically.

4. Analyze and Map Prior Art to Claims

Once potential prior art is found, compare it element-by-element to the patent claim.

Ask:

  • Does a single reference disclose all elements of the claim?

  • Can multiple documents be combined to show the invention was obvious?

  • Do dates of the references clearly predate the patent’s priority date?

For each piece of prior art, prepare a claim chart to map specific features to corresponding passages in the prior document. This is often a key component of legal challenges.

5. Document, Review, and Strategize

Compile all findings in a structured report:

  • Bibliographic details of prior art

  • Publication dates

  • Claim-by-claim analysis

  • Legal grounds for invalidation (novelty, inventive step, etc.)

Consult with a patent attorney to review your findings and prepare for legal proceedings. Your report should be detailed enough to be used in oppositions, reexaminations, or court submissions.

Conclusion

A thorough invalidation search can turn the tide in a patent infringement dispute. By exposing strong prior art that challenges novelty or inventive step, you can neutralize an opponent’s patent and shift the legal advantage in your favor.

However, this process is complex and requires both technical insight and legal understanding. If you're not confident navigating global patent databases and interpreting claim language, consider partnering with a professional patent search firm or an experienced IP attorney.

Need help with a professional invalidation search?
At Wissen Research, our expert analysts specialize in deep prior art searches to support legal, strategic, and R&D decisions. Contact us to learn how we can assist.

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