A patent is a territorial right granted by the government of the territory to an inventor to exclude others from making, using, offering for sale, or selling an invention throughout the territory or importing the invention into the territory for a limited time in exchange The invention must be novel, e.g., not fully disclosed in any single prior art reference. (2) The invention must be non-obvious for public disclosure of the invention.
Criteria of patentability:
Foremost criteria for the grant of a patent application for an invention is that the invention should be new, i.e. 1) The invention must be novel, e.g., not disclosed in any of the prior art reference and 2) The invention must be non-obvious, e.g., the invention should not be obvious to any person who is skilled in the art on the date of filing of the invention as patent application. Another criteria for the grant of the patent is industrial use of the invention.
If a granted patent is blocking any product ready to be commercialized, then it is the strategy of the company whose product is ready to be commercialized to invalidate the patent. Invalidation of the granted patent is prosecuted in judicial courts. According to certain patent office rules, patent invalidation cases can be initiated by “Any person interested”. “Any person interested” can be defined as a person engaged in, or in promoting research in the same field as to which the invention relates. Patent can be invalidated on various grounds.
These grounds / strategies for the invalidation of a patent which are followed by attorneys in the judicial courts are mentioned below:
1) Invention claimed in the patent is not novel.
The claimed invention is present in the prior art as any published document. If the claimed invention is lacking novelty with regards to the earlier disclosed knowledge or prior use can invalidate the patent.
2) Subject of the claim of the patent is not an invention.
Patent offices of different countries have patent laws, which defines the patentable subject matter. An invention does not falling in the criteria of the patentable subject matter can be invalidated on the grounds that the subject of the claim of the patent is not an invention according to the patent law of that country.
3) Patent was wrongfully obtained by a person other than the person entitled.
Applicants of the patent should be the inventors who have worked on the invention. Insufficient disclosure of inventors’ details or disclosure of a person as an inventor who is wrongfully mentioned to be the inventor can form the basis of invalidation of patent. The issue here is that a patent may be invalidated or revoked in many jurisdictions, if the patent applicant or inventor is not the true and first inventor.
4) Insufficient disclosure of the invention
It is the duty of the inventors to disclose all material information relating to the invention, including the best mode to accomplish the invention, all material art known to the inventor, and any information that might render the invention unpatentable, such as a public use or published description of the invention occurring more than one year prior to the filing date of the patent application. Any deliberate efforts for insufficient disclosure or description of information related to the invention can form the basis for invalidation of the patent. Another basis of invalidation of patent is false suggestion or representation to any fact or statement made in connection to the grant of the patent.
Claimed invention is obvious to any person skilled in the art and does not involve any inventive step can be invalidated on the basis of obviousness. If a person skilled in the art (appointed by the court) considers the claimed invention to be evident and easily discoverable as of on the priority date of the claimed invention, then the claim of the patent can be invalidated on the grounds of obviousness.
6) The claims included in the patent are not fully substantiated by the description provided.
7) Failure to disclose information relating to foreign applications.
8) First to file / First to invent
US patent laws follows the patentability criteria to be first to invent whereas other countries patent laws follow the First to file concept. In US, invalidation of the patent can be based on first to invent basis where any inventor who has first invented the invention is given preference.
9) Patent holder did not exercise diligence in pursuing the patent application process (Patent grace period)
In US and Japan, a grace period of 6 to 12 months is allowed for filing patent application after publication of the patented idea or device. If the inventor publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. Filing of patent application after the expiry of the grace period allowed by the respective patent offices can be a ground for the invalidation of the granted patent.