Validity Search

Validity Search

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A validity search is usually requested by an individual or company who wants to determine whether an active patent (i.e., a patent which has not expired) is worthy of patent protection, i.e., to determine the validity of an active patent. Reasons for this type of request include: 1) a potential infringer wants to practice a process or commercialize a product, but wants to avoid paying royalties to a patent holder by finding a patent invalid or 2) a patent holder wants to verify the strength of their patent with the assumption that the searcher performs a more thorough search than the examiner who issued the patent. This type of search is also called an "invalidity search".

The searcher does not consult examiners in this type of search since the essence of the patent examining process, i.e., issuance of "valid" patents, is being questioned by the validity search request. The searcher must lay out their own search based on the invention claimed in the active patent. The scope of the search includes all documents that have dates older than the established priority date of the active patent. Also, the searcher can verify whether the patent is indeed active by checking whether it was withdrawn or maintenance fees have been paid. Lists of withdrawn and expired patents (due to lack of payment of maintenance fees) are given in the Official Gazette.

The inventive concept being sought by the searcher is the portion of the specification that is encompassed by the claims. Often the validity search is directed to the broadest independent claim, but the thorough searcher will address all claims. The results of the search are reported by comparing the contents of the documents cited in the search with the particular claims and recited features in the claims. Interpretations can be made when the claim recitations are not identical to the terminology used in the cited search documents.

The search must review the contents of the active documents to determine the "meets and bounds" of the claims, since the range of the claims cover only what is supported by the specification. Claims are deliberately written in the broadest terms possible so as to maximize patent protection. However, the claims are, in fact, limited by what is disclosed in the patent. Thus when the disclosure describes particular features of the invention, the claim recitation, however broadly it is written, cannot cover features that are beyond the particular features disclosed. As a general example, a disclosure describing a brick object and broadly claiming a solid rectangular ceramic object, cannot really cover ALL solid ceramic rectangular objects, even though it is recited as such; it can only cover the embodiments described in the specification along with all reasonable interpretations.