When patent holders sue or threaten infringement, invalidating the patent-in-suit is as effective as proving an accused product avoids reading on the claims. Successfully overcoming the presumption of validity avoids the time and expense of drawn out patent litigation.
Absent rare instances of applicant misconduct, defendants need relevant undisclosed prior art to succeed in reexamination. Depending on the depth of an examiner’s search in prosecution, undisclosed prior art references may be difficult to obtain. Typically, accused infringers’ only recourse is requesting one or more professional invalidity searches at great expense in the hopes that relevant prior art can be found.
Researchwire Knowledge Solutions (researchwire.in), an Indian intellectual property consulting firm, recently began offering invalidating prior art searches on a contingency fee basis. Under this novel approach, the company charges only a per reference fee for references found useful in a validity contention/re-exam request. Their searches include both foreign and domestic patent databases, and non-patent literature such as product manuals, technical disclosures and research papers.
The incentive for identifying relevant prior art due to the contingent fee structure, may help ensure the quality of an invalidity search supporting a reexamination request.