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Opinions and Strategic Counseling

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Prosecution & Counseling

A patent opinion can be an invaluable resource for companies wishing to safeguard their investments and minimize litigation risks. 


Expert Advice at Every Step

Throughout the typical product development process, certain IP issues will inevitably arise. For example, how likely is a company to obtain a patent on a given product? Will commercialization of that product infringe another party’s patents? Are those patents actually valid and enforceable against the company? When these questions come up, a company can safeguard its assets and protect itself from infringement litigation by seeking the expert advice of patent counsel.

Patentability Opinions

If you have expended the time and resources to develop an innovative product, it’s natural to want to rush to the patent office to file an application. However, the cost of patent prosecution can climb to tens of thousands of dollars and obtaining a patent is far from a certainty. A patentability opinion can be used to determine whether filing and prosecuting a patent application ultimately will be worth the time and expense required. An experienced patent attorney can help you with that decision by learning your technology, searching the prior art, and providing a formal legal opinion as to the likelihood of success at the patent office.

Freedom to Operate Opinions

A patent gives its owner the right to exclude others from the invention claimed but does not give the owner the right to make, use, or sell that invention in the marketplace. Whenever a company plans to develop and launch a new product, there is always a risk that commercialization could be blocked or severely limited by a competitor who holds a similar patent or a patent on a contributing element of the new product. A freedom to operate analysis can be used to confirm that the production, use, or sale of your product does not infringe the patent rights of others. Our attorneys do this by identifying existing patents that cover technologies similar to our client’s and then assessing the risk of patent infringement they pose. If we find “high risk” patents, we propose creative solutions and pursue the most advantageous strategies for our clients.

Infringement Opinions

The mere existence of a patent that is similar to yours does not necessarily mean that your product infringes it. An infringement opinion is similar to a freedom to operate opinion in that it involves a careful analysis of competitors’ patents, but is more narrowly focused on one or more high risk patents. When we find patents such as these, our attorneys construe the claims of the patent at issue to determine their exact coverage and the extent to which our client’s product might infringe them.

Validity Opinions

The purpose of a validity opinion is to determine whether a patent is valid and enforceable against a specific party. There are two very common scenarios in which our clients seek validity opinions:

  1. When we have identified patents that our client’s product likely infringes, and
  2. As due diligence before buying or licensing a patent

Validity opinions involve extensive searches of the target patent’s prior art to determine whether each claim actually is novel and non-obvious, which will permit a conclusion that some, all, or none of the claims in the target patent are valid. If we conclude that the claims at issue are valid and enforceable, then we will pursue licensing or acquisition strategies. If we find that the claims are invalid, we will recommend that our client proceed with its plans to produce or use its product.

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