Successfully invalidating a competitor’s patent is a powerful maneuver that extends far beyond simply winning a legal dispute. Patent invalidation provides immediate freedom to operate, allowing a company to develop and sell products without the threat of costly infringement litigation or licensing demands. More than just a defensive shield, patent invalidation serves as an offensive tool that can dismantle a rival’s market monopoly, level the competitive playing field, and neutralize threats from patent assertion entities.
Important: in patent invalidation, more than on our other posts on patenting for engineers, a patent lawyer or attorney specialist, is more than recommended.
Benefits
Invalidating a competitor’s patent provides significant defensive and offensive advantages that directly impact a company’s ability to compete.
The most immediate benefit is securing “freedom to operate,” which allows the company to develop, manufacture, and sell its products without the looming threat of an infringement lawsuit and the associated crippling legal costs or royalty payments.
Successfully nullifying a patent can also serve as a powerful offensive maneuver, clearing the market of a competitor’s monopolistic barrier and opening it up for the company and others to innovate and compete on a level playing field. This not only saves the company from potential licensing fees but can also disrupt the business model of patent-holding entities (trolls) that rely on licensing weak or overly broad patents for revenue.
Beyond the immediate legal and competitive relief, invalidating another’s patent yields substantial long-term strategic and financial rewards. It enhances a company’s reputation and establishes it as a formidable player in its industry, capable of defending its technological space. This can deter future frivolous infringement claims. Financially, removing a blocking patent can significantly de-risk a company’s operations, making it more attractive to investors and potentially increasing its market valuation.
Patent Invalidation Strategies
Substantive Grounds for Invalidation
Substantive grounds for patent invalidation refer to the core legal requirements that an invention must meet to deserve patent protection. These grounds focus on the invention itself and its description within the patent, rather than procedural mistakes made during the application process.
Challenges on substantive grounds attack the fundamental merit and legitimacy of the claimed invention’s right to a patent monopoly. These can be because of:
Prior art (anticipation or lack of novelty): this is one of the most common strategies and involves finding evidence that the invention was already known to the public before the patent’s filing date. This evidence, known as “prior art,” can be in the form of earlier patents, published articles, or any public disclosure that describes the invention. If a single piece of prior art discloses every element of the claimed invention, the patent can be invalidated for lacking novelty.
Prior public communication: it is a broad concept that encompasses any form of disclosure that makes the information about the invention available to the public. This directly creates “prior art” and is used to challenge a patent on the grounds of novelty (anticipation) or obviousness. Examples include a published academic paper, a presentation at a scientific conference, a publicly accessible website, or a doctoral thesis in a university library. The core issue is that the knowledge of the invention was placed in the public domain, triggering almost immediately a patent invalidation.
This is very frequent as the information could be:
- the company grounded its R&D on on university thesis or research, or their employees brought their ideas …
- the company searched for investors
- the company did some market research to evaluate the potential of the innovation …
- beta tests ….
Obviousness (lack of inventive step): even if an invention is new, it may not be patentable if it is considered obvious to a person with ordinary skill in the relevant field. This strategy involves demonstrating that the invention is a predictable combination of known elements from multiple prior art sources.
For experienced engineer, this parameter is hard to grasp, as the “ordinary skill” bar for a patent to be declared as a novelty, can seem quite low.
Insufficient disclosure (lack of enablement and written description): a patent must provide a detailed and clear description of the invention so that a person skilled in the art can replicate and use it without undue experimentation. If the patent fails to provide this level of detail, it can be invalidated for lack of enablement or an inadequate written description.
Non-patentable subject matter: patent laws in most jurisdictions exclude certain categories from patentability, such as abstract ideas, laws of nature, and natural phenomena. This strategy argues that the patent’s subject matter falls into one of these excluded categories.
FYI: the “patentability” of human DNA discussion was related to this.
Prior public use or sale: with some commonalities with prior art (the invention was already known to the public before the patent’s filing date), a patent can be invalidated if the invention was communicated, in public use or offered for sale before the patent application was filed (subject to grace periods in some countries like the U.S.). This strategy requires providing evidence of such public use or commercial activity that predates the critical date of the patent filing.
Note: “public communication” is not the same, although they are closely related concepts that can often overlap in a patent invalidation case. The key difference lies in what is being made public: the information about the invention versus the activity involving the invention.
- A public use involves using the invention in its natural and intended way in a public setting, even if the inner workings are not fully understood by the observers. For example, demonstrating a new type of drone at a public park.
- An on-sale bar is triggered when the invention is offered for sale, even if no actual sale occurs. The purpose of this rule is to prevent an inventor from commercially benefiting from their invention for too long before filing for a patent.
While a public use or an offer for sale often involves a “public communication” that discloses the invention, it doesn’t have to. The activity itself is the trigger for invalidation, making it a distinct and powerful tool for challenging a patent’s validity.
Incorrect inventorship: a patent must correctly identify all of its inventors. If an inventor is omitted or someone is incorrectly named as an inventor, the patent can be invalidated. This can occur through innocent error or intentional deception … or non-patent specialists or checks.
Inequitable conduct or fraud: this strategy involves proving that the patent applicant intentionally misrepresented or withheld material information from the patent office during the examination process. Such misconduct, if proven, can render an otherwise valid patent unenforceable.
Fictional example: while prosecuting a patent for a new pharmaceutical compound, “A” was aware of a scientific paper that questioned the compound’s stability. The patent examiner had specifically asked about compound stability. Believing the paper would prevent the patent from being issued, “A”‘s attorneys deliberately chose not to disclose it. Years later, an accused infringer uncovers evidence of this intentional withholding, and a court declares the entire patent unenforceable due to inequitable conduct.
Procedural and Strategic Methods
Procedural and strategic methods for patent invalidation are concerned with the specific legal vehicles and tactical approaches used to challenge a patent’s validity, rather than the substantive reasons for the challenge itself.
The underlying principle is to select the most effective form and mechanism based on strategic goals like cost, speed, and the specific weaknesses of the target patent. This involves choosing among various options, such as quasi-judicial proceedings before a patent office like an Inter Partes Review (IPR) for a streamlined attack on prior art, initiating a full-blown lawsuit in district court to allow for broader arguments and discovery, or proactively submitting evidence to an examiner before a patent is even granted.
These methods represent the practical tools and calculated game plans used to execute the substantive arguments for invalidation:
Inter Partes Review (IPR): available in the United States, an IPR is a trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to challenge the validity of patent claims based on prior art consisting of patents and printed publications. It is often a faster and less expensive alternative to district court litigation.
Fictional example: “A” sues “B” for infringing its patent on a network data caching method. Instead of fighting a costly court battle, “B” files an IPR petition with the PTAB. “B” presents two older patents and one technical journal article that were never considered by the original patent examiner. They argue that these prior art documents, when combined, make “A”‘s invention obvious. The PTAB agrees and invalidates the challenged claims.
Post-Grant Review (PGR): also a U.S. proceeding before the PTAB, a PGR must be filed within nine months of a patent’s issuance. It allows for challenging a patent on any ground of invalidity, not just those based on prior art.
Ex Parte Reexamination: this process, which can be requested by any person at any time during the life of a patent, asks the patent office to reexamine the patent’s claims in light of new or overlooked prior art. The third-party requester has limited participation after filing the initial request.
District Court Litigation: a patent’s validity can be challenged in a federal district court, often as a counterclaim in a patent infringement lawsuit. This route allows for a wider range of invalidity arguments and more extensive discovery compared to PTAB proceedings. A defendant can also proactively file a declaratory judgment action to invalidate a patent if they have a reasonable apprehension of being sued for infringement.
Third-Party Pre-issuance Submissions: this proactive strategy allows third parties to submit prior art to the patent office while a patent application is still under examination. This can prevent a patent from being granted in the first place by providing the examiner with relevant prior art.
Joint Defense Groups: when multiple companies are affected by the same patent, they can form a joint defense group to pool resources and share the costs of challenging the patent’s validity. This collaborative approach can strengthen the invalidation case and reduce the financial burden on any single company.
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