Opinions & Related Counseling
Patent opinions are commonly obtained and used for a variety of reasons. We work closely with clients to prepare defensive opinions, offensive opinions, and freedom-to-operate opinions. In addition, we provide counseling related to the opinions.
Defensive patent opinions are typically used by a company seeking to avoid liability for infringement or willful infringement of another's patents. They are sought from a patent attorney shortly after receipt of a demand letter bringing the patents to the company's attention. Defensive opinion inquiries may also be triggered responsive to learning about the patents during preparation or prosecution of patent applications, as a result of a patent search by someone within the company or the company's attorneys, and in other circumstances.
The most common types of defensive opinions are non-infringement opinions, invalidity opinions, and unenforceability opinions. While oral opinions are appropriate in some situations, a well-reasoned and thorough defensive opinion letter is preferable and often required in litigation.
Infringement opinions, validity opinions, and enforceability opinions are common types of offensive patent opinions. They are typically obtained before sending a demand letter, bringing a patent infringement lawsuit, or engaging in certain licensing or other patent monetization activities. Like defensive opinions, written offensive opinions may be preferable or required in certain circumstances.
Freedom-to-operate opinions, sometimes referred to as clearance opinions, are typically sought to analyze the patent landscape related to a company's activities before entering a market, releasing a product, undertaking a new service, or the like. They may be used by the companies themselves and/or by investors looking to invest in the companies.
Since freedom-to-operate opinions identify potentially problematic patents, one or more types of defensive opinions are usually prepared for each of the identified patents. As a result, the time and cost required to prepare a full written freedom-to-operate opinion is so large that such opinions are impractical in most situations. This is especially true where there are a large number of potentially troublesome patents, which also increases the likelihood of missing relevant results and obfuscating pertinent information.
Recognizing these drawbacks, we prefer to take a different approach. We work with clients, whether operating companies or investors, to devise a client-specific solution that is both cost-effective and likely to provide meaningful results. Solutions may vary based on a number of factors such as the relevant market or industry, the technological area, the timeline, and the client's budget. We have found that clients derive the most value from a more informal oral opinion in combination with on-going counseling related to design-arounds, patent portfolio development, patent portfolio management, and other related issues.
Counseling related to an opinion is as important, and sometimes more important, than the opinion itself. The circumstances necessitating the opinion often warrant advice related to various legal issues. Additionally, implementation of design-arounds is an important consideration that requires input from patent counsel. One or more additional opinions may be generated based on the design-arounds.
After an opinion is rendered, it is critical to periodically review the opinion and revise it if appropriate. Existing strategies for patent portfolio development and management should also be reviewed and possibly modified in light of the opinions and/or design-arounds.