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Invalidation searches

Consider a situation, when you need to invalidate a patent, and there are already a lot of products in the technology domain (apart from the one under litigation). For example – these can be consumer goods, mobile phones, printing machines, drones or a website, etc. Even those obsolete or current products can act as pretty solid prior art – generally known as ‘System prior-art’.

Why We Prioritize It Over Other References?

A System Prior art is different than other non-patent literature as it speaks for its authenticity. Such a reference provides a proof that the claimed technology was in practice before the critical date.

With extensive searching in product catalogs, user manuals, news articles, trade show/exhibition websites, or on YouTube product review videos – the evidence to support the presence of required features can be identified.

If that doesn’t work – we can also do offline research, for example – in books, printed tech magazines, catalogues etc. And even can reach out to people with relevant experience – for example, manufactures, developers, who have seen the entire evolution of the products over the years and may have useful information on the required concept. In fact, people who may have now shifted their career in another domain can also be valuable sources of information, as their experience goes back much further than current tech players!

GET IN TOUCH

Deepak Syal
[email protected]

Chakshu Kalra
[email protected]

3rd party submission during examination in US

Potentially, every patent can be invalidated on grounds of Prior Art

It is common to come across existing & granted 3rd party patents where the owner of the patent makes infringement complaints. One of the key strategies to follow apart from gathering opinion on non-infringement is to find out evidence that holds against the validity of these 3rd party patents. In other words, some circumstances require extensive and thorough search for locating prior art that can nullify the claims of the blocking patent.

Engage us on such complex evidence gathering tasks where we can assist you with extremely thorough & in-depth searches to locate invalidating prior art. We have consistently assisted US, European and Japanese Attorneys in finding evidence of prior disclosure for inventions. Many of our clients (litigation attorneys) are working with us on contingency basis with their clients and frequently engage us on Invalidation assignments.

After the search we do meaningful documentation of results and our analysis includes the technical grounds on which we find the prior art to be relevant against the validity of the claims.

Due diligence to check the strength of the patents internally

——- Engage us on such complex evidence gathering tasks where we can assist you with extremely thorough & in-depth searches to locate invalidating prior art. We have consistently assisted US, European and Japanese Attorneys in finding evidence of prior disclosure for inventions. Many of our clients (litigation attorneys) are working with us on contingency basis with their clients and frequently engage us on Invalidation assignments.

After the search we do meaningful documentation of results and our analysis includes the technical grounds on which we find the prior art to be relevant against the validity of the claims.

Opposition Search for EP patents

Finding evidence to nullify the claim of novelty and inventive step

This type of search helps you to discover important prior art that can be used when filing for an opposition or a request for revocation of a right. At GreyB we search international patent databases and non- patent literature data sources to find prior evidence against the subject-matter of one or more of the claims. Along with relevant references, the scope of the search includes the references which in combination can challenge the validity of the patent. To make our reports meaningful, we chart the exact evidence of the claims in the prior art to make a case of opposition.

ITC cases

ITC Section 337 is part of the Patent Litigation practice. Comparatively stringent and with a speedy action process, if infringement is proved, the accused products could be barred from being imported into the US.

So what are the options you have, when ITC infringement is proved without getting the Product Banned?

Invalidate the patent.

Yes, invalidating a patent could put an end to all your woes. When you’re faced with ITC litigation and there is a lot to lose, the best bet would be to find available prior art for asserted patent and prove the patent invalid.

We at GreyB understand the intricacies involved in ITC cases and have worked on complex ITC section 337 patent infringement cases, assisting the defendants. Here are three such instances where we conducted validity searches using unconventional strategies to find prior art for patents in question.

File IPRs in US

An attorney fighting a litigation suit is not unlike a soldier on a battlefield. The soldier equipped with sniper or high-tech weapons could give a deadly blow to the enemy, however, that’s not enough. He also requires something to defend himself, and most importantly, a devised strategy to conquer at any cost.

An attorney, challenging the validity of a patent at Inter Partes Review – on behalf of his/her client – faces the same challenge nonetheless. Having a Tier-I reference is not always enough. To make the case stronger, it has to be looked into from every search angle. Besides, the attorney would also have to figure which elements in the claim appear weak, and how the supporting references can suffice the loopholes of the primary one, ensuring success in the pursuit.

In our decade of experience serving clients from various domains, we have experienced this first hand and have tried to incorporate the practice into our daily work. Thus, while finding bang-on prior art that can knock-off the target patent is our primary goal, we also try to find supporting prior art and documents in alternative domains which can assist our clients in building strong arguments when it comes to litigation proceedings.

Ongoing litigation cases

Be thorough and confident before claiming infringement

This type of search is conducted on your patent to be aware of important hidden prior art that can potentially create invalidity issues before claiming infringement or a transaction. You can commission GreyB for an international prior art search to locate the references that either unaccompanied or in combination can challenge the validity of the patent.

What our clients think about us

  • If I were to give you a testimonial, I will praise for your reporting format especially the level of detail you can capture in the analysis. Another aspect that struck a chord with me is how the file history was taken into account for understanding claim scope - this saves me time and shows your ability to do good work.

    Equity Partner, Top Law Firm in USA
  • I don’t have much to add, most of my requirements are about good quality invalidation search as that’s what our firm is specialized in doing. The star point for me in your capability and services is how well you extend the search after my feedback in the invalidation projects. I am not sure if all companies follow this practice but I am quite happy to get your results and the routine feedback call you set up after the project is delivered.

    Partner of a Boutique IP Litigation firm, Chicago, USA
  • Our corporate team has 4 divisions and we need a lot of work on the business use of patent data (Patent-Informatics). I got impressed with your dashboard capabilities, especially when you can ensure the accuracy of data behind the dashboard storyboards. This is quite a powerful tool with our internal customers as we need to present the patent picture very often.

    Large Corporate in Medical Device Industry, Boston, USA
  • As you know I work with you on FTO matters in consumer products industry. My project technologies are simpler but I need first turnaround times and clean reporting to make a go and no-go decisions. I am happy with the work I have been doing with you – it is good value for money and crisp reports, exactly what I want. Further, the particular point which has impressed me is – faster responses. I have told this earlier too but I reiterate the same point, you have made sure I get the reply same day, within few hours which is impressive

    A mid-size corporate, Northern Virginia, USA

FAQs

Which databases do you use for monitoring?
Do you keep a track of Patent families?

Yes

How Experienced We Are

0
COUNTRIES
180
CLIENTS
1100
PROJECTS
1800
SINCE

Whom we worked with

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