Invalidity and Non-Patentability

Every issued patent is presumed valid. However, this is not a guarantee of validity of the patent. An in-depth review of the validity of the issued claims of a patent may be necessary prior to monetizing the patent, as part of a Right-to-Market study, as a defense against willful infringement, in preparation of a Hatch-Waxman filing, or a pre-litigation strategy. KramerAmado believes that its in-house search team has the experience and expertise necessary to make sure there are no hidden dangers, or in the alternative, find the prior art describing the claimed invention that threatens its client's business.

In addition to finding and applying the most relevant prior art, KramerAmado professionals have the legal and scientific know-how to properly understand the relevant technology in order to recognize and apply the closest prior art. Moreover, its professionals are abreast of the constantly changing landscape of intellectual property law and investigate patent claims for fulfilling the requirements of patent eligibility, definiteness, written description and enablement, as well as identifying double-patenting and inequitable conduct. The end result is an opinion that is useful for business planning, can be relied on for defending against willful infringement, can be used as a basis for a re-examination, can be used to prepare a Hatch-Waxman notice letter, or can be used to ensure a strong and assertable patent as needed.

With the complete implementation of America Invents Act, patentability and non-patentability opinions have increased importance and can be a very powerful tool for clients. A prior art search prior to filing an application can assist in preparing an application with patentable claims which will minimize rejections from the USPTO, reduce fees and reduce the likelihood of a Request for Continued Examination. Published applications identified as part of a Right-to-Market study may now be attacked by filing a pre-issuance submission or by filing a Post-Grant Review if the claims are found unpatentable. In particular, Post-Grant Reviews may now be initiated on the basis of a lack of eligibility, written description or enablement, in addition to novelty and non-obviousness.  Therefore, an in-depth Invalidity Study will be a necessary part of any Post-Grant Review.