Patent invalidation

A patent is a territorial right granted by the government of the territory to an inventor to exclude others from making, using, offering for sale or selling an invention throughout the territory or importing the invention into the territory for a limited time in exchange. The invention should be novel, eg, not fully disclosed in any prior art reference. (2) The invention should not be obvious to the public disclosure of the invention.

Criteria for patentability:

The main criterion for granting a patent application for an invention is that the invention must be new, that is, 1) The invention must be new, for example, not disclosed in any of the prior art references and 2) The invention must be non-obvious. For example, the invention should not be obvious to any person skilled in the art on the date the invention is filed as a patent application. Another criterion for granting the patent is the industrial use of the invention.

If a granted patent is blocking any product ready to be marketed, then it is the strategy of the company whose product is ready to be marketed to invalidate the patent. The invalidation of the granted patent is processed in the judicial courts. According to certain rules of the patent office, patent invalidation cases can be brought by “any interested person”. “Any interested person” can be defined as a person who is dedicated to or promotes research in the same field to which the invention refers. The patent can be invalidated for various reasons.

These reasons / strategies for patent invalidation that lawyers follow in court are mentioned below:

1) The invention claimed in the patent is not new.

The claimed invention is present in the prior art like any published document. If the claimed invention lacks novelty with respect to previously disclosed knowledge or prior use it may invalidate the patent.

2) The object of the patent claim is not an invention.

Patent offices in different countries have patent laws, which define patentable subject matter. An invention that does not meet the criteria of patentable subject matter may be invalidated on the basis that the subject of the patent claim is not an invention according to the patent law of that country.

3) The patent was improperly obtained by a person other than the owner.

The patent applicants must be the inventors who have worked on the invention. Insufficient disclosure of the inventors’ details or disclosure of a person as an inventor who is wrongly mentioned as an inventor may form the basis for invalidation of the patent. The problem here is that a patent can be invalidated or revoked in many jurisdictions, if the patent applicant or inventor is not the true first inventor.

4) Insufficient disclosure of the invention

It is the inventors’ duty to disclose all material information related to the invention, including the best way to carry out the invention, all material art known to the inventor, and any information that may make the invention unpatentable, such as public use or published description of the invention that occurs more than one year prior to the filing date of the patent application. Any deliberate effort for insufficient disclosure or description of information related to the invention may form the basis for invalidation of the patent. Another basis for the invalidation of the patent is the suggestion or false representation of any fact or statement made in connection with the grant of the patent.

5) Evidence

The claimed invention is obvious to any person skilled in the art and does not imply an inventive step that can be invalidated on the basis of obviousness. If a person skilled in the art (appointed by the court) considers that the claimed invention is obvious and easy to discover as of the priority date of the claimed invention, then the patent claim may be invalidated for reasons of obviousness.

6) The claims included in the patent are not fully supported by the description provided.

7) Do not disclose information related to foreign applications.

8) First to present / First to invent

US patent laws follow the first-to-invent patentability criteria, while the patent laws of other countries follow the First-to-File concept. In the US, patent invalidation can be based on a first-to-invent basis, where preference is given to any inventor who invented the invention for the first time.

9) The patent owner did not act diligently in the patent application process (patent grace period)

In the US and Japan, a grace period of 6-12 months is allowed for filing a patent application after publication of the patented idea or device. If the inventor publishes the invention, an application that will be considered novel despite publication can still be validly filed, provided that the submission is made during the post-publication grace period. The filing of the patent application after the expiration of the grace period allowed by the respective patent offices may be grounds for invalidation of the granted patent.