Invalidation / Non-Infringement Contentions

Invalidation or Non-Infringement Contention is a defensive strategy towards Patentee Enforcement Action where the infringer investigates the scope of opponent’s patent claims and files a countersuit to invalidate the opponent patent by identifying the close prior art against claims.

Prometheus IP has hands-on experience in preparing claim charts for invalidation contentions. We prepare customized claim charts, which depict a comprehensive and relevant comparison table for each element of the claim with respect to the relevant prior art.

Sample Report

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Our X-Factor

  • Identifying the relevant excerpts from the prior art which anticipates the asserted patent or renders its obviousness criteria.
  • Supporting patent attorneys by preparing ready to use claim charts for Invalidation Contentions.
  • Techno legal expertise
  • Knowledge in Patent law of different jurisdictions.

Prometheus IP Approach

  • Thorough technical understanding of the subject patent claims and detailed description.
  • Detailed review of the subject patent bibliographic details and image file wrapper details.
  • Detailed review of subject patent family members and prosecution details of family members.
  • Detailed review of forward and backward citations of the subject patent and family members.
  • Framing search strategies to uncover the prior-art based on keywords, assignee, inventors, citations (forward and backward), patent classification codes (US,CPC, IPC, ECLA and F terms).
  • Handling IP/Non-IP queries utilizing the specialized databases.
  • Detailed analysis of the search results describing the similarities and deviations.

Deliverables

  • An Excel file depicting the claim chart with different sections of the potential publications disclosing the claim(s) subject to the invalidation contentions.
  • Reporting format includes a quick analysis table and claim chart that would help to quickly understand the output of the search report with respect to invalidation contentions.