© 2011, Gallagher & Dawsey Co., LPA
February 2011

Many inventors and start-ups are aware of the need to seek some type of patent opinion when they develop new products or introduce new products to market. However, what they are usually unaware of is that several types of patent opinions exist that may be appropriate depending on the objective sought. The following provides an overview of several types of patent opinions, as well as the usual circumstances for seeking each particular type of patent opinion.

Patentability Opinions

One of the most common patent opinions sought by inventors and businesses is the patentability opinion. As its name suggests, a patentability opinion is a legal opinion that analyzes whether an invention is likely to satisfy the requirements for the grant of a new patent. A patentability opinion is generally solicited from a patent attorney when an inventor is interested in seeking a patent to protect their invention. The primary purpose of a patentability opinion is to determine whether a patent application is likely to be granted protection as an issued U.S. patent. Generally, the cost of a patentability opinion is a fraction of the expense involved with preparing and filing a patent application.

In rendering a patentability opinion, the patent attorney will conduct a prior art search and review the relevant prior art to determine whether the invention appears to meet the patent office requirements of usefulness, novelty and nonobviousness. No prior art search is perfect because the patent attorney has to try and anticipate actions of a patent examiner concerning the prior art relevant to likely patent claims for the invention. Additionally, the prior art considered relevant by one patent examiner or patent lawyer may be considered irrelevant by another patent examiner or patent lawyer. Thus, a patent attorney must rely on their past patent prosecution experience regarding what prior art is most likely to be considered relevant to the patentability of an invention. Currently, the USPTO databases include nearly 8 million issued patents and millions of published patent applications. However, a prior art search and patentability opinion, rendered by a patent attorney, will increase the likelihood that relevant prior art is located and properly analyzed to allow the inventor or business to make an educated business decision on whether to move forward with preparation and filing of a patent application.

Freedom to Operate Opinions

A freedom to operate opinion is typically solicited when a business is planning to release a new product or process. The primary objective of a freedom to operate opinion is to determine whether there are any problematic patents in the field of technology prior to releasing the product or process to market. In other words, the business wants to know their risk of being sued for patent infringement if they launch a new product or process.

Similar to a patentability opinion, a freedom to operate opinion is rendered based upon the results of a prior art search, but a freedom to operate opinion is only concerned with patents that are currently in force. However, for a freedom to operate opinion, the prior art search is generally broader and more comprehensive. This is primarily due to the liability that is involved with providing a freedom to operate opinion. For example, if a prior art reference happens to be overlooked in a patentability opinion, the business could lose out on the several thousands of dollars it invested in filing a patent application. On the other hand, if a relevant prior art reference is missed in a freedom to operate opinion, the business could be liable for several hundreds of thousands of dollars, if not millions, for infringing a patent.

When relevant in-force prior art patents are located, the freedom to operate opinion is generated by considering the entire file history of the patent, not just the patent itself. The file history provides additional insight into the types of arguments made during the prosecution process that can have a substantial affect on the scope and construction of the patent claims. A typical file history can be hundreds of pages long and require many hours to analyze. For this reason as well as the liability issues noted, the cost of obtaining a freedom to operate opinion is substantially more than for a patentability opinion.

Unfortunately, obtaining a freedom to operate opinion does not preclude the possibility that a business will be sued for patent infringement. However, if the business is sued and ultimately found to have infringed a patent, the freedom to operate opinion may be useful to show that the business acted in good faith to prevent an award for infringing willfully.

Infringement Opinions

An infringement opinion is somewhat similar to a freedom to operate opinion with one primary exception: the patent that creates the basis for liability is known and does not have to be located through a prior art search. In a typical situation, a business will receive notice from the patent owner, usually in the form of a demand letter, which asserts the business is selling or making products that infringe one or more of the other party’s patents. At this point, the business would be well-advised to seek the advice of a patent attorney who can provide an independent analysis of the likelihood that the product would be found to infringe the patent.

Typical infringement opinions will construe the claims, and then compare the claims to the product to determine whether the product infringes any of the claims. As with a freedom to operate opinion, an infringement opinion must be made in light of the patent file history to determine whether any statements made during prosecution could limit or expand the enforceability of the claims. Additionally, the infringement opinion should discuss in detail all relevant facts and applicable legal theories.

In addition to the defensive purpose of infringement opinions, an infringement opinion may be used as an offense. For example, if a business owns a patent and believes that another entity is selling a product that infringes their patent, the business may want to procure an infringement opinion to determine whether a good-faith basis exists for filing an infringement lawsuit. In another context, a patent owner may seek an infringement opinion prior to initiating licensing negotiations, to determine the likelihood that a product would infringe the patent, as well as to provide some negotiating leverage.

As with the freedom to operate opinion, an infringement opinion is utilized to help businesses make reasonable, well-informed business decisions. Moreover, defensive infringement opinions may be used to show that the business believed there was a good-faith basis for believing it did not infringe an asserted patent, which may preclude a finding of willfulness and triple damages.

Conclusion

Depending on the circumstances facing an inventor or business, one or more patent opinions may be advisable. By having a general understanding of the type of patent opinion applicable to a particular situation, the inventor or business will be better equipped to communicate their objectives to a patent attorney, which will ultimately lead to better legal representation.