Making Novelty Argument in Invalidation Search

Doing invalidation search, though, is not a rocket science still it requires acquaintances with patent regulatory norms and long exposure to patent search. This article underlines the ground on the basis of which a target patent can be invalidated. What is the easiest catch available to a searcher and how to make a novelty argument.

Making a novelty argument against any patent reference (application or granted) is usually considered a straightforward concept. To show that a claim is not novel, one must find a single document that describes all the features of the claimed invention (in particular, the broadest independent claim).

On the other hand, making an inventive step is usually more complex and nuanced. To prove that a claim is not inventive, one needs to show that a single document, or multiple documents in combination, makes the claimed invention obvious to a person having ordinary skilled in the art (PHOSITA OR POSITA). The definition of PHOSITA varies with patent law of each jurisdiction and one needs to follow recent cases where Courts of that particular jurisdiction may have proposed some tests to prove Obviousness or Inventive Concept. We will discuss this in more detail in a future article.

Coming back to the novelty argument, the primary focus of a patent invalidation search is usually to find an anticipatory document because it is more difficult to invalidate a patent on other grounds such as obviousness, utility, or coverage of patentable subject matter. An invalidity search is considered as successful if one or more documents (patent or other non-patent literature) have been found that in their own capacity could prove that the invention was not novel at the time of application.

Most of the times, it is acceptable that a single document does not have to invalidate each and every claim of the target patent. If one document could anticipate all the elements of first independent claim of the target patent, and other document could anticipate all the elements of second independent claim of the target patent; the two documents in combination can be used to make a novelty argument during an invalidation search.

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