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When Do You Need a Patent Opinion?

Patent opinions:
When do you need to get them?
to manage your risk

What’s a patent opinion and when do you need one?

A patent opinion is simply a written opinion from a patent lawyer. It might be about:

  • patentability
  • freedom to operate (product clearance)
  • infringement
  • invalidity

Generally speaking, getting a patent opinion is a way to understand and manage risk. That risk might involve:

  • Spending time and money on a patent application that’s likely to be rejected
  • Spending time and money to develop a product and bring it to market, when that product is likely to be the subject of a patent infringement lawsuit
  • Spending time and money to defend an infringement lawsuit that you’re likely to lose
  • Being hit with damages for willful infringement (because you didn’t bother to determine whether you were infringing or not)
  • Spending time and money to seek to invalidate a competitor’s valid patent

For example, the only way to know “for sure” that a patent is (or isn’t) valid and infringed is to litigate. But that’s an expensive and time-consuming option. A patent opinion is basically a patent attorney’s informed and researched prediction of what a court would decide.

Patentability

A patentability opinion requires looking at an invention and determining whether it’s patentable. To be patentable, an invention must be:

  • patentable subject matter
  • novel (new)
  • non-obvious
  • useful

To determine whether something is novel, a patent attorney looks at “prior art,” which can include prior patents and publications.

Freedom to Operate

A freedom to operate opinion involves looking at other patents and advising on whether a client’s proposed product or method would infringe one or more patents.

Infringement and Invalidity

A company hit with a demand letter from a patent holder claiming infringement may seek an infringement opinion. The lawyer can do an independent analysis of whether the client’s product or method does or doesn’t infringe.

If it does, then the best strategy is often to take a license from the patent holder and resolve the matter quickly.

If it doesn’t, then there’s the strategic question of whether it’s better (and cheaper) to fight the matter out in court or to pay for a license.

These different types of patent opinions involve different amounts of work and risk for the patent attorney, and so the costs can vary from a few hundred dollars to more than ten thousand dollars. As with an insurance policy, by paying for an opinion up front you can save money down the road.

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