PatenTest

A patent validity search is conducted in order to determine whether a patent will withstand attack in litigation. Another way to think of a validity search is as an extensive or comprehensive patentability search. It is similar to a patentability search, but its purpose is to determine whether a patent already obtained on an invention is valid or not. If it is thought that a patent may be invalid, or another party may try to claim invalidity resulting from prior public use or a prior inventorship, an investigation must be undertaken to find evidence which can prove or disprove this.

 

A common reason for conducting a validity search could be when litigation concerning infringement of a patent is on the horizon, and the defendant is trying to invalidate the plaintiff's patent.

 

Another common reason would be to order a validity search as preparatory step for licensing negotiations. In assessing the value of the licensed patent a licensee is about to receive, he/she may want to conduct a validity search to determine the strength of the patent. Upon receiving the results, the licensee can then adjust its minimum royalty payments according to the findings before he/she enters into the license agreement.

Because a validity search is a search based on an obtained patent, various search constraints in place under a patentability search often will not hold true here. Validity searches usually comprise of incentives to induce as thorough and as comprehensive a search as possible.

 

1. You are preparing for court litigation for the alleged violation of intellectual property rights
   
2. You are preparing for negotiations over royalty payments
3. You wish to prevent a competitor from obtaining unmerited advantage