Steps of Invalidity Search

(a) To grasp the minimum invalidity range necessary for client.

(b) To understand what description is necessary for invalidity publication and to expect the description described in the objective publication.

(c) To prepare searching formulae by selection and combination of keywords and classification codes in order to obtain an appropriate hit number form mega-data without omission while avoiding unnecessary publications (noise) as far as possible.

(d) To conduct screening the hit publications in order to find objective Invalidity publication(s).

Quality of Invalidity Search

In order to maintain high quality Search, in the above steps (a) to (d), the followings should be noted.

(a) When the objective range to be invalidated is narrower than the claimed range, it is useless to find a material outside the objective range even it is within the claimed range.  In order to conduct effective search, close communication with a client is necessary for defining the objective range appropriately.

With respect to management of confidential information, our client is able to request us to conduct invalidity search safely.  District of Massachusetts court admitted the privilege covering a communication between Japanese patent attorney and a client referring to the Civil Proceedings Act of Japan (Article 220, Par. 4, Item C and Article 197, Par. 1, No.2) (VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (DC Mass. 2000).

It is available for our client to communicate with us in English or Japanese on the telephone.

(b) In addition to technical knowledge, legal knowledge regarding the invalidity of the target is necessary for expecting what description should be described in the target publication.

(c) In order to prepare searching formulae which is able to prevent the omission of target, to reduce the amount of noise and to obtain the hit number enabling visual screening, grasping the target search range, selection of appropriate data-base, knowledge about sorting codes specific to Japan Patent Office, and searching technique are necessary. 

(d) In screening, the expectation of the publication descriptions of the above (a) should be modified according to technical knowledge and legal knowledge.  After evaluation of the description of the hit publication, the most appropriate publication(s) is specified.

From the above, when a matured patent attorney with good searching skills conducts or manages searching with the above (a) to (d) steps, high quality search results can be obtained at reasonable cost.

For more information, please press INVALIDITY SEARCH (3).