The quality of the evidence supporting a claim can often be the determining factor in patent litigation. A single overlooked patent, technical publication, product manual or prior patent filing can alter the course of a dispute. This is why an invalidity search should be more than a ‘keyword search'. The quality of the search in the United States, where patent disputes can involve complex technologies and vast amounts of prior art, can directly impact on the strategy of litigation.
Start With the Claim, Not the Database
A good search starts with the patent claims to be reviewed. A blind search of a patent database can yield thousands of documents without being able to understand the claims in the patent.
The research team should dissect each claim that is relevant into their constituent technical elements. The elements can then be searched in patents, in non-patent literature, in technical papers, in product documentation, in standards, in conference papers and other credible sources. This way, they won't get a long list of documents that have only tangential relevance to the legal and technical issues.
As the U.S. Patent Office has noted in its recent guidance, the difference between a "similar" and a "required" claim element is an important consideration in patent disputes in the U.S.
Look Beyond Exact Terminology
The expression of patents is not always that of common technical usage. Older documents can be written in entirely different terms to describe the same thing or a familiar component may be described in a less conventional way.
One good research approach is to look for synonyms, historical usage, abbreviations, alternate spellings, technical usage, and related terms. Citation networks might also uncover earlier citations that regular keyword searches won't.
And this is particularly true for various industrial areas such as software development, telecommunication, semiconductors, biotechnology or mechanical engineering where even the naming conventions in use will change drastically from one year to the other.
Build the Search Around Time and Technology
Analysis of dates should be a part of the strategy at the outset rather than a post-research check. The issue is not just whether a document is 'technically' the same. The publication history as well as its relationship to the relevant dates of the patent must also be investigated.
It is an area that needs attention from patent families. There may be several publication numbers for a document and it may be published in different dates and jurisdictions. The family can help the researchers to understand the evolution of an invention and to find documents that may be more useful than the first document found.
In addition, in US litigation, researchers should be able to differentiate publications of patents, patents issued, international filings, and non-patent literature. Each can give a different aspect of the technical and chronological story.
Combine Automated Tools With Human Review
It is important to be aware that modern patent databases are able to facilitate searching on a much larger scale but cannot substitute for the full use of technical judgment. Machine-assisted searching can help locate similar terms, categories, citations, and documents to investigate in greater detail. The hard part is determining what references are important and which ones to include.
Most experienced researchers do the manual work of looking through the highest ranking references, and work backwards from them. “Don't worry about a seemingly insignificant patent—there may be an older patent with a much more relevant disclosure.” The other not so glamorous aspect of patent research is the backwalk.The backwalk of the patent search is one of the less glamorous aspects, but can be very productive.
Don't assume that the longer the search the more documents it will return, this is not an effective invalidity search. It is the one that recognizes evidence that is subject to careful technical and legal examination and is persistent.
Separate Discovery From Evidence Building
Students often consider all potential search results to be evidence. Discovery and evidence development is a different process.
While conducting discovery, investigators can cast a wide net. As potentially important references become apparent, a close examination should be made of every such reference to determine the publications, technical disclosures, dates, family relationships, and limitations of claims covered.
This can be organized with claim charts. They help researchers and legal teams to identify the strength points and weaknesses of a reference. That helps avoid one of the common issues in litigation research: taking multiple separate documents to mean something that one does not mean.
An Expert Tip Many Searches Miss
Do not be satisfied with the first good prior art reference. If a potentially important document is discovered, review the documents it references, the documents that reference it, the patent families, the work of the inventors prior to the document, and technical publications in the same time period. This can reveal a wider evidence trail and occasionally expose an earlier reference which is more easily analysed.
Best research can result from the “trails” of links and not just from adding more search terms.
Citius Minds and the Broader Research Process
Specialized research support can be utilized to handle the quantity of technical information in an organization that has complicated patent disputes. Citius Minds offers Patent Research and Litigation Services covering patent invalidity research, prior art and technical investigation.
The importance of such work isn't in the type of documents it delivers but in the discipline of the research. Findings must be organized, traceable, and linked to the claims being assessed by the legal teams.
A Better Search Produces Better Litigation Decisions
Complicated technologies, large patent families and vast quantities of NPL can be involved in Patent litigation research in the USA. An intelligent invalidity search adds structure to that complexity, taking into account claim analysis, terminology research, date verification, citation tracking and in-depth human review.
It's not about amassing a spectacular pile of papers. It is to locate the evidence that is right, comprehend exactly what it reveals and provide the litigation team with a solid base for their next step. That distinction can be of a practical nature and can be very useful in a patent search long before a case goes to court.
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