Why you need a patent opinion
1. What is a legal opinion and why you might need one?
A legal opinion is indispensible in helping you make the right business decision and, often, it will provide needed coverage should you face litigation. In essence, it is our formal advice as experienced registered patent attorneys on the applicability of the law to your particular set of facts. For example:
- Do you have a new product and want to know whether it can be protected by a patent or trademark before you launch it?
- Are you concerned that your new product might infringe someone elseâ€™s patent or trademark? And what do you do if you have been threatened with a patent or trademark infringement suit?
- Or do you have questions about the value of your intellectual property in a merger or acquisition?
These are all questions that we can answer for you by providing the necessary legal opinion. Getting a competent opinion can be critical in making the right business decision because it may help you to determine whether you have intellectual property rights for a new product or other asset before you make substantial investment in its commercialization. It can give you a â€śgreen lightâ€ť to take a product to market by addressing the legal risks you might face. Not only can a good opinion help you to make the right business decision, it can be an important legal defense in litigation, shielding you from potential increased damages.
Here at TLO, we undertake a thorough process in formulating the legal opinion, tailoring our work to the particular needs of the client. First, we have a detailed discussion with you to make sure we thoroughly understand your product and your business. Only after we understand your business do we conduct the necessary search to determine whether your product is patentable, whether it is likely to pose any risk of infringement, or, in the appropriate case, whether you will need to design around an existing patent. Second, we bring our experience and expertise to bear, identifying the legal issues that you might face before you face them. The kind of experience we bring to the table includes more than just filing patent applications, we also conduct jury trials involving patent cases and we handle patent appeals. Other law firms have retained us to serve as patent experts in their cases. Third, legal advice must be translated into real world business decisions. Thatâ€™s why we communicate to you in unvarnished, plain-spoken language so that you can rely on our legal opinion to make your business decisions.
2. Types of opinions
There are many different types of intellectual property opinions, including patentability opinions, patent infringement and right-to-use opinions, patent validity opinions (and also trademark right-to-use and dilution opinions).
a. Patentability Opinions
If you believe you have an inventive idea, our registered patent attorneys will determine whether your idea is likely to be patentable.
This begins with conducting a patentability search, which involves searching the public records (e.g. published patents and patent applications at the US and foreign patent offices) for any public disclosure(s) relating to the invention to see if the particular invention is novel, non-obvious and useful. Unlike other firms that farm out the important work of searching and investigating the public records, we conduct the patentability search ourselves. We then render a legal opinion as to the patentability of your invention based on our examination of the most relevant references.
We recommend that our clients first conduct a prior art search themselves at http://www.uspto.gov. Sometimes the client will find that their invention has already been patented. But relying upon such a search if the client did not find any similar inventions is not a good idea for several reasons. First, the search engine used by the public at uspto.gov is a word search engine. This works only if all inventors are using the same terminology, which is rarely the case. To solve this problem, similar inventions are categorized into classes and subclasses. By searching using the patent class system, we see patents concerning the same invention category rather than only those in the category that share the same terminology. This is how the patent examiners in the patent office will do a search when your patent application is examined. Additionally, we search these classes globally, which is not possible if the USPTO public search engine is used. Prior art published almost anywhere in the world can potentially block your patent. The bottom line is that doing your own search is smart, but relying upon your own search if you do not find anything is dumb.
A final world of cautionâ€”if you do find a relevant reference, do not hide it from your patent attorney or the patent office. You have a legal duty to disclose all relevant prior art to the patent examiner. Intentionally failing to disclose relevant prior art of which you are aware is called fraud on the patent office (or inequitable conduct) and has severe penalties. If the patent examiner does not find the reference you attempt to hide, and your patent is granted, the courts will come down on you extremely hard. You will be ordered to pay attorney fees to anyone you sure for infringement and possibly damages to anyone who was harmed. It is best to tell us everything you know so that we can develop an honest legal strategy that can work effectively for you.
Though it is not necessary to obtain a patentability opinion before filing a patent application, a patentability opinion will often save money by helping you to decide whether to make the financial investment in applying for a patent. If you should decide to proceed with applying for a patent, a patentability opinion will increase the likelihood of success and lessen the cost of prosecution of the application by focusing the application on the elements of the invention most likely to be patentable, with a better description and claims that avoid the existing art.
b. Right-to-Use Field of Use Opinions
You will want to know whether your new product or process infringes any active patents. In other words, if you want to know whether you might be sued for patent infringementâ€”then you will need a right-to-use opinion (i.e. a clearance opinion). A right-to-use opinion may help you decide whether or not to move forward with the new product or process.
c. Infringement Opinions
If you want an opinion as to whether you may be infringing a particular patent that is owned by a competitor, we can provide a non-infringement opinion. Where we determine that you may be infringing someoneâ€™s patent, we can advise you as to alternative options, such as the feasibility of designing around the patent, obtaining a license for the patent, or investigating the validity of the patent.
On the other hand, if you own a patent that may be infringed, and need to decide whether to undertake the significant costs associated with suing the potential infringer, then you will need an infringement opinion. An infringement opinion is helpful to establish the requisite due diligence for bringing a lawsuit in good faith.
d. Validity Opinions
If you are accused of patent infringement, challenging the validity and/or enforceability of the asserted patent is often the first line of defense. We can provide an opinion on the validity or enforceability of a competitorâ€™s patent. If the patent is potentially invalid, you may be entitled to practice the invention without liability for infringement. Such an opinion may help you to decide whether to risk litigation or pursue a licensing agreement with the patent owner. Further, in considering whether to license the patent, knowing its strength or validity will help to determine its value. This will significantly impact the royalty rate for the patent.
3. A patent opinion can be a shield in litigation.
When confronted with potential patent infringement the savvy business will obtain a validity and infringement opinion from experienced patent counsel, which can be an effective shield against increased damages. Under the patent law, a court may award increased damagesâ€”up to three times actual damagesâ€”for willful patent infringement. Willful patent infringement means that an infringer sold the infringing product or service despite an objectively high likelihood that its actions constituted infringement of a valid patent. As a general proposition, a defendant can establish a reasonable basis for believing that its activity was not infringing on a valid patent by demonstrating reliance on a competent opinion letter. Although there is no longer an affirmative obligation to obtain an opinion of counsel, obtaining an opinion letter is still a best business practice because itâ€™s a key step in establishing a successful defense against a charge of willful infringement.