Use Case – Validity Evaluation 2018-07-19T16:05:55+00:00

Patent portfolio mining and evidence of use preparation have increasingly become necessary parts of patent licensing, patent sales, and patent assertions. In fact, these activities require significant investment by either the patent holder or interested buyers. So, to avoid waste and achieve efficiency, evaluating the validity of patent assets must be a critical component of the overall patent evaluation work.

Basically speaking, validity evaluation consists of identifying the gist of the claimed invention and validating the scope of the patent claims at issue. For large-scale validity evaluation work, Quality Insights is a powerful product that applies artificial intelligence (AI) and proprietary algorithms to large integrated databases to provide users with instantaneous access to relevant, high-quality data.

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Validity Evaluation Process

Validity Evaluation Process (new)

Access to File Wrappers for the Gist of Invention

A critical file-history review often consists of reviewing the applicant’s arguments in order to overcome prior art references or a patentee’s arguments in the post-grant proceedings. Quality Insights provides, on its overview page, indexed entries showing all rejection and post-grant challenge events, corresponding dates, authors of each event, the rejected/challenged claims, legal basis (i.e., 35 U.S.C. § 101, 102, 103, or 112), and cited prior art references. With these pieces of information—available with just one-click—it is easy to understand exactly what happened in the prosecution history and even in the post-grant proceedings.

Access to File Wrappers for the Gist of Invention 1

Clicking on the various links on Quality Insights’ overview page provides users with a deep dive into these events, allowing them to discern the gist of the invention and assess the strength of the arguments as well as their effect on the scope of the allowed claims. This information enables an efficient prior art search and proper claim construction.

Access to File Wrappers for the Gist of Invention 2

Enhanced Prior Art Search

Quality Insights features enhanced capabilities for file-history-based prior art searches, and it can compile a list of highly relevant prior art with just a single click. To accomplish this, Quality Insights first traces the prior art references cited in the prosecution history, including the post-grant proceedings of all family members, and collects the prior art references considered by different examiners as most relevant.

Enhanced Prior Art Search 1

Second, Quality Insights uses the prior art references cited in the prosecution history, including the post-grant proceedings of all family members, and conducts forward/backward citation searches of additional references covering the claimed technology. These references can be instantaneously compiled and analyzed to assess the strength and validity of the patent at issue.

The dates of all references in the second degree art table are automatically evaluated to confirm their eligibility as prior art for the patent at issue. As well, the legal basis of the citations in corresponding rejection events are provided. Extensive citation mining work for prior art references can be performed precisely by first directly picking eligible prior art references or § 102 citations. Quality Insights enables users to work faster, freeing them from manual searching and verifying the prior art status.

Finally, Quality Insights provides prior art references that go beyond what can be gathered through a file-history review. On Quality Insights’ Semantic Prior Art page, the top 50 relevant patent references (US, EP, CN, JP, KR, and WO) are displayed, courtesy of Patentcloud’s Semantic Search algorithm. In addition, if the time or resources available for validity evaluation is limited, the results that Semantic Search provides are an excellent source of prior art.

Enhanced Prior Art Search 4

If a manual prior art search is required, you can also quickly find the estimated eligible date of the prior art upon your first glance at the overview page.

Enhanced Prior Art Search 5

Get Intrinsic Evidence for Claim Construction

Patentcloud’s Quality Insights provides convenient tools for consolidating intrinsic evidence for claim construction. First, Patentcloud has a Patent Comparison feature that can be used as a reading tool to facilitate the references between claim terms, figures, and specifications.

Get Intrinsic Evidence for Claim Construction 1

In addition, Quality Insights’ File Wrapper Search feature provides users with a listing of the rejections, remarks, and notices of allowance in the file wrapper, which can assist in checking the potential effect on the claim construction of the patent at issue.

Get Intrinsic Evidence for Claim Construction 2

Events and documents related to specific claim terms can be identified by entering keywords in the search bar (cross-document keyword search) to facilitate your research, especially if there are dozens of documents in the file wrappers.

Get Intrinsic Evidence for Claim Construction 3

Applicants’ arguments and their effect on specific claim terms can be easily identified through the cross-document keyword search feature in the File Wrapper Search. With the resulting claim construction, a better evaluation of the prior art references can be also gained.

The Authors

Mr. Hua Chen

Mr. Hua Chen is an experienced attorney who has practiced law both in big firms as well as inside global companies. His extensive experience includes litigating high-stakes patent lawsuits, conducting technology licensing work, and counseling clients on their IP strategies. Mr. Chen attended college in China in the early 1990s. He was later enrolled in the prestigious Biochemistry, Cellular, and Molecular Biology PhD program at Johns Hopkins University before switching to a legal career. He obtained his J.D. degree from the Northwestern University School of Law and graduated with honors. While practicing law in the international law firm of Paul Hastings, Mr. Chen worked with a team of lawyers and obtained significant litigation victories for their clients. More recently, Mr. Chen has been involved in devising and enforcing technology-licensing programs for global companies.

Mr. Neil Shen

Mr. Neil Shen is an experienced patent consultant who has worked in a range of global companies. His experience includes patent lawsuits, patent invalidity analysis, patent portfolio management, and the counseling of clients on their intellectual property (IP) strategies. Before becoming involved in the IP field, Mr. Shen studied at National Sun Yat-sen University, where he obtained a master’s degree in optoelectronics. Mr. Shen’s experience in the IP industry includes positions at the global display company Innolux, where he became involved in display-product development, and Hon Hai. More recently, Mr. Shen has been involved in technology-licensing programs for global companies.

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