2.5 Validity Searches Is This Patent Valid? Can It Be Legally Challenged?
Patent holders have the exclusive right to prevent others from manufacturing, using, offering for sale, selling, or importing their inventions without authorization. They may enforce this right by initiating or threatening legal proceedings for infringement before a court. In response to such a threat, a party may choose to stop the infringing activity, negotiate a licensing agreement with the patent holder, or most relevant here challenge the validity of the patent itself.
An essential first step is to confirm the legal status of the patent. This requires determining whether the patent is currently in force in the relevant jurisdiction, has expired, or has been revoked. If no relevant patent is in force, no further action is required. This issue is discussed in more detail in section 2.8.
If a relevant patent remains in force, the following step is to determine whether the claimed invention is both novel and non-obvious. In contrast to a novelty/patentability search, where the search concepts are largely hypothetical, a validity search benefits from the clearly defined claims of the patent that poses the potential threat. By locating documents demonstrating that the claimed invention is not new or would have been obvious, it may be possible to persuade the patent holder to withdraw the threatened legal action or to obtain more favorable terms in licensing negotiations.
Other situations may also require an assessment of patent validity. Examples include negotiations for a patent licensing agreement or the acquisition of a company whose assets include patents. In both circumstances, evaluating the validity or enforceability and therefore the strength and commercial value of the patents is a critical step.
2.5.1 Search Activity - Bicycle
Assume you work for a bicycle manufacturer and intend to export bicycles to a particular country for the first time. After carrying out a freedom-to-operate search (described in section 2.8), you discover an active patent in that jurisdiction that you believe could present an infringement risk.
Claim 1 of this patent reads:
"A bicycle frame made of a magnesium alloy."
The description of the patent provides information regarding the composition of different magnesium alloys that may be used.
The first step is to search for evidence indicating whether the invention defined in Claim 1 is novel and non-obvious. Any publicly available document may be relevant, regardless of where it was published. Even if the patent is valid in only one country, the invention must still be considered novel and non-obvious in view of any prior art disclosed anywhere in the world.
A search for "magnesium bicycle frame" in Patentscope produces promising results. For example, a Chinese document, CN103643095, contains the following abstract:
"The invention relates to magnesium alloy for a bicycle frame and a preparation method thereof. The magnesium alloy comprises the following elements in percentage by weight: 3 to 4 percent of Cu, 0.3 to 0.8 percent of Mn, 0.3 to 0.7 percent of Nd, less than 0.01 percent of Si, less than 0.01 percent of Fe, less than 0.001 percent of Ni, and the balance of Mg. The preparation method comprises the following steps of heating raw materials to 730 to 750 DEG C till the raw materials are molten, stirring by utilizing a stirrer, sampling and analyzing the samples; standing after the samples are qualified; casting; extruding; and thermally treating. The magnesium alloy maintains a majority of advantages of Mg-Mn alloy, the tensile strength and the yield strength are improved, the tensile strength is at least increased by one third compared with the tensile strength of the ordinary magnesium alloy, and the yield strength is at least increased by 50 percent; the fatigue resisting strength exceeds 150Mpa, the creep resistance is obviously enhanced; the magnesium alloy provided by the invention is easy to weld and is free of the weld seam crack tendency, has a compact metallic organization structure and is free from the segregation caused by the gathering of the manganese ions."
This finding demonstrates that the invention defined in Claim 1 lacks novelty. Therefore, there is no need to examine its obviousness. However, the patent proprietor may amend Claim 1 to specify a particular alloy. In that situation, the next step would be to conduct searches directed toward the specific alloys described in the patent.
You are encouraged to repeat the above search in Espacenet and compare the results. You may also try using the element symbol "Mg" instead of the word "Magnesium." (Hint: Perform the search using the query: (magnesium OR Mg) AND bicycle AND frame make sure the parentheses around "magnesium OR Mg" are included.)
2.6 Name Searches - What Inventions Has This Individual or Company Been Involved In?
Name searches are carried out to identify patent documents connected with particular individuals or organizations, whether they appear as applicants, assignees, patentees, or inventors.
Such searches can be helpful when attempting to understand how a specific invention operates if only the inventor’s name is known. However, name searches also have broader applications. For example, they can reveal the technological areas in which competitors are active. They can also show the jurisdictions where competitors are pursuing patent protection, which may indicate the markets where they intend to introduce new products. Conversely, identifying jurisdictions where they are not filing patent applications may highlight regions where their inventions could potentially be used freely.
2.6.1 Search Activity - Wind-up Radio
In 1991, British inventor Trevor Baylis recognized the potential advantages of developing a wind-up radio intended for use in third-world countries. His primary aim was to help limit the spread of AIDS by broadcasting information via radio to regions without access to electricity. The concept of wind-up electrical power was first brought to the market in 1996 when Freeplay introduced its wind-up radio.
Baylis produced a prototype of his invention. His wind-up radio operated by means of a coiled spring that drove a generator through a gear system, delivering 14 minutes of playback after 30 seconds of winding. This technology has subsequently been adapted by others. Modern models incorporate rechargeable batteries, enabling the radio to be charged at any time rather than only during operation. The Freeplay Energy product range also includes combination torch/radios, a shortwave radio model, and systems that integrate solar power, batteries, or AC/DC adapters alongside wind-up energy. The newest radios provide approximately 50 minutes of operating time when fully wound, which requires about 60 turns.
Freeplay Energy has sold more than three million units since the company was established, with over 150,000 units distributed to developing countries, primarily through governments and aid organizations. Although the units remain relatively expensive, ongoing efforts aim to ensure that this technology delivers meaningful benefits where it is most needed.
Major corporations such as Sony and Philips have also entered the wind-up radio market. In addition, Motorola has partnered with Freeplay to develop a wind-up mobile phone charger that provides 5 minutes of talk time for every 45 seconds of winding. This product has been designed to work with all Motorola phones.
This innovation represents only the beginning of wind-up energy technology. Mobile phones, laptops, and many other devices are becoming increasingly energy-efficient while remaining essential in everyday life. Products based on the Motorola Freecharge concept are already emerging from other manufacturers. The British company Atkin Design and Development has developed a next-generation "wind-up battery" that uses a supercapacitor instead of a rechargeable lithium battery. When this innovation was applied to a wind-up radio, Atkin Design, working in partnership with Sony, produced a device capable of playing for 90 minutes after just one minute of winding.
The news excerpt above is sourced from www.gizmag.co.uk/go/1263/.
You have just read the preceding article about wind-up technology, a topic with which you previously had only limited familiarity. You have been seeking a technology that could be appropriate for your country, where insufficient infrastructure restricts widespread access to electricity. Your goal is to gain a deeper understanding of this technology so that it can be used within your country to distribute health information and educational material through radio broadcasting.
You know that Trevor Baylis is an inventor associated with this field. How could you obtain additional information by using him as a starting point?
Use Espacenet to search for inventions attributed to Trevor Baylis. Based on the article you reviewed, you may also wish to identify patents filed by Freeplay Energy, since this was the company that first commercialized the technology in products such as wind-up clocks, radios, and torches.
Begin by entering TREVOR BAYLIS. (You could also have entered Trevor BAYLIS, Trevor baylis, or trevor baylis, since the search engine is not case-sensitive.)
Six patent documents are retrieved, and the one listed under ‘Electrical Generators’ is relevant to the product you are investigating.
To obtain further details about the invention such as how it functions and the problems it seeks to address click on the title ‘ELECTRICAL GENERATORS’.
Note:
This search produced the desired result. However, to achieve greater accuracy, you could have used the ‘Advanced search’ interface, which allows you to specify the name ‘Trevor Baylis’ explicitly in the inventor field.
Next, locate patent applications submitted by Freeplay Energy by entering that name in the applicant field within the ‘Advanced search’ interface. According to the article, this was the company that initially adapted wind-up technology together with rechargeable batteries.
Three patent documents appear in the results list. After examining the abstracts, you will notice that the second document relates to a wind-up torch. Once again, success you have identified the invention referenced in the article.
At this stage, you have fulfilled the objective of this Search Activity. However, if your curiosity about wind-up technology has increased, you can perform an additional search using any of the IPC (International Patent Classification) or CPC (Cooperative Patent Classification) symbols shown. If you would like to see how IPC or CPC symbols are applied in practice, continue with the remainder of the exercise.
You can copy and paste these symbols into the Advanced Search screen. For example, you may use the CPC symbol F21L13/06 as shown below:
And here is the contents page of the CPC:
Summary of Search Activity 2.6.1
Searching by name in the applicant and inventor fields in Espacenet is relatively simple. It allows you to identify inventions attributed to a particular individual across all technical fields and also enables you to expand the search by using classification symbols. However, variations in names, typographical errors, and similar issues may result in some relevant documents being overlooked. Methods for addressing these challenges will be discussed in Unit 3.
2.6.2 Search Activity – Earphones
A user listening to streamed music through earphones provided by an online service may sometimes need to remove them. If the user does not manually pause the playback, part of the audio will be missed. In addition, the battery of the electronic device and the user’s cellular data allowance often limited to a specific monthly quota will continue to be consumed unnecessarily.
To address this issue, an inventor named Alessandro developed a pair of earphones equipped with ear presence sensors. When the system detects that the earphones have been removed from the user’s ears, a control circuit automatically pauses the music.
The inventor submitted a patent application for this concept:
a) Can you identify the patent application he filed? What is the inventor’s full name?
b) Who is the owner of the patent application?
c) In what way were the rights transferred to the owner? Find the details of the transfer agreement by accessing the assignments database of the USPTO at
d) https://assignment.uspto.gov/patent/index.html#/patent/search
e) List the documents cited against the patent application in the Patent Office search report
f) Can you locate any other patent application(s) filed by Alessandro?
g) Identify the abstract(s) of any other such application(s)?
TABLE
2.6.3 Search Activity – Sweetener
“LONDON (AFX) - Renewed concerns about the strength of the patents protecting Tate & Lyle PLC’s highly profitable artificial sweetener, Sucralose, led the British food company’s shares to reverse earlier gains today.
The decline followed a report on the FoodNavigator website stating that Bangalore-based Indian pharmaceutical manufacturer Pharmed Medicare had expressed confidence in developing an alternative method for producing the sweetener using a process that was unlikely to infringe Tate’s patents. ‘This is the most serious challenge that Sucralose has faced so far. While I do not expect it to be fatal, it is certainly a significant risk,’ said Investec analyst David Laing.
A spokesperson for the British company maintained that the 32 patents protecting the product offered adequate protection. Pharmed Medicare president Sundeep Aurora, who stated that the company had obtained legal advice in the United States, Asia, and Europe, appeared to agree. He reportedly indicated that the company had not yet developed a method to manufacture the sweetener on a commercially viable scale.”
Determine whether Pharmed Medicare has filed a patent application relating to their new process by searching for the company name in Patentscope.
This search returns more than 120 results. The search can be refined by adding the keyword "sucrose."
Doing so reduces the number of results to 83. A chemist at Tate & Lyle then identifies the relevant patent document as item number 31 in the following list.
Now locate Tate & Lyle’s patents using the same search platform.
The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657