Patent Opinions

Patent Opinions Help Ensure the Success of a New Invention or Product

Our patent and intellectual property attorneys in Minneapolis and Atlanta provide you with five options relating to patent opinions including:

1. Patentability Opinion
2. Patent Landscape Opinion
3. Right-to-use Opinion
4. Non-infringement Opinion
5. Validity Opinion

Each patent opinion serves a different purpose. As an inventor or a business with a new “gizmo,” you may need one or more of these intellectual property opinions to help ensure the commercial success of your idea, concept or plan.

Here is more information on each patent opinion:

Patentability Opinion

Patentability opinions are the most general type of patent opinion and provide an assessment as to whether an invention is likely patentable. We search the prior art (patents and non-patent literature) for inventions and products that may have the same or similar inventive concept. In most instances, a patentability search and opinion are strongly advised.

Identification of relevant prior art can change the focus of a patent application and, in some cases, may result in an inventor or business deciding not to proceed with a patent at all. The patentability search and opinion can, therefore, save an inventor or business thousands of dollars that would otherwise be wasted on an invention that is obvious or not novel.

Patent Landscape Opinion

A patent landscape opinion provides you with a general summary of the state of the patentability of an idea or the infringement risk of a product that is under consideration. Patent landscape opinions can serve several purposes. For industry sectors where patentability is important (e.g., medical devices), the patent landscape opinion may provide guidance on which approach to take and where to focus invention and development efforts. With respect to infringement risk, the patent landscape opinion helps identify who the players are in the general patent space you occupy, and can also serve as the beginnings of a right-to-use opinion, which may occur later in the product development cycle. As such, patent landscape opinions help set direction in the invention and development processes, and thus typically occur early in the patenting and product development process.

Right-to-Use Opinion

A right-to-use patent opinion identifies and evaluates patents that may have a legal claim against a product that you may be considering. The right-to-use opinion is often referred to as a “clearance” opinion or a “freedom to operate” (FTO) opinion. The right-to-use opinion differs from the patent landscape opinion in that it occurs later in the development process when product design is mature.

In the right-to-use opinion, we identify patents that may claim aspects of the product under consideration. The claims of the identified patents are screened to determine whether there might be infringement issues raised by a competitor. If a competitor’s patent is identified that may be problematic, a more thorough analysis (see Non-Infringement Opinion, below) is recommended to determine whether there is, indeed, an infringement risk. Another advantage of the right-to-use opinion is the identification of prior art that may be used to invalidate an otherwise problematic patent.

Non-infringement Opinion

A non-infringement opinion examines whether there may be infringement issues raised by owners of a specific patent or family of patents. Non-infringement opinions may vary substantially in content and complexity. In one extreme, a non-infringement opinion may take the form of a short memorandum that identifies a claimed feature in the analyzed patent that your product does not include. In another extreme, a non-infringement opinion may involve a detailed construction of certain claim terms and an in-depth study of the prosecution history of the patent.

Non-infringement opinions can serve several purposes. They may lead you to make modifications to a product that work around the limitations of the patent claims. You may also consider seeking a license from the owner of the patent in view of a non-favorable opinion. An opinion of non-infringement can also establish that any infringement that may be found later was not willful, thereby eliminating the risk of enhanced damages against you.

Validity opinion

A validity opinion assesses whether a patent of interest should have been granted. For example, an infringement assessment may determine that a patent reads on a product, but there is a belief that the patent claims are too broad to be patentable. In another example, a business may be considering purchasing a patented product line or licensing the rights to use it and would like to know how the patent would stand up to a validity challenge. A validity opinion may also serve as a basis for a post-grant challenge of the patent at the U.S. Patent and Trademark Office. A validity opinion is tailored to address such circumstances.

Patent opinion services

Patents represent a significant investment in research and development. Performing due diligence at the outset can save an inventor or business headaches in the future as well as time and money now. A patent opinion is a vital aspect of due diligence, helping to provide some level of comfort and assurance before pursuing an invention or product.

Our intellectual property attorneys help inventors and companies to preserve and protect their most valuable assets.