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When involved in patent litigation or licensing, there will likely come a time when you are accused of patent infringement. When this happens, there are three common options open to you:
- Rebut the claims of infringement;
- File a counter claim of infringement;
- Invalidate the asserted patent claims.
If you determine that your product does not infringe the patent then option 1) is the first path to consider. Option 2) can be taken if your own patent portfolio covers the accuser’s products and can be the basis of a cross-licensing agreement. However, given the prevalence of non-practicing patent entities (sometimes referred to as “patent trolls”) or weaknesses in your own patent portfolio, you may be left with only option 3) as a practical course of action.
Though a granted patent is assumed to be valid, the validity is most often attacked on the grounds of “anticipation”, or “obviousness” based on prior art.
GIS’s patent and technical experts pride themselves on their ability to find relevant prior art to support an argument that a patent is invalid based on either anticipation or obviousness.
Although the search process is customized to fit each situation, in general, GIS experts follow the following process. Starting with a small number of carefully researched documents, we choose the most likely reference to follow. This in turn uncovers new documents, which in turn lead us to further documents. The end result is one or several relevant prior art documents as well as the search path taken. You receive a small, manageable number of documents to evaluate, the process is quick and efficient, and having the search path documented, it is easy to continue the search at a later date. |
Often, before you come to GIS for prior art searches, you will have done some searching on your own. To take this into account, we will keep you up to date on our progress in order that we may combine our knowledge with yours to ensure that the same searching is not repeated unnecessarily. It also gives you the option of shortening or extending the search time based on the results discovered to gain the maximum benefit from your limited budget.
GIS will search both public patent and technical databases as well as our own, internal Technical Library which includes over 1,800 technical references and data books dating back to 1966.
External technical experts affiliated with GIS may also be consulted, if required.
Clients are typically presented with a short list of the most relevant art, along with explanations of the relevance. A detailed search history will also be delivered which will aid in any future searches.
Prior art searches are also commonly used when conducting due diligence on a patent for sale or purchase, or when performing a patent valuation.
Contact us today for more information. |
