Have you sought an opinion recently?

By Theresa A. RakocyTheresa_Rakocy_01

In today’s business world, with increased competition and businesses facing unpredictability because of non-practicing entities, it is important for a business to minimize risk to itself and address uncertain outcomes by seeking a legal opinion. After investing time and money on new products, businesses seek to potentially leverage the marketability of a new product by pursuing potential protection. On the other hand, being unable to produce or sell the product due to infringement concerns, or worse, being sued over a product is not something any company wants to face.

Do you have a new product and want to know whether you can obtain a patent to protect it?

• Are you concerned that the new product might infringe an existing patent?

• Do you have questions about the validity of existing patents that could impact your business?

These are just a few reasons that you should seek a legal opinion in conjunction with development of a new product. An opinion is not something that you should seek after a lawsuit has been filed. Instead, a competent opinion can help businesses determine the value of an idea before investing significant time and money into development.

There are many different types of intellectual property opinions, including patentability opinions, so-called freedom to operate opinions, non-infringement opinions, and patent validity opinions. Which type of opinion would be valuable to your business depends upon the stage of development of your product in the life-cycle of development, the flexibility in product development should a patent issue be raised, and the ability to assure customers that your product has a low risk of encountering a viable infringement claim.

Patentability Opinion
A patentability opinion can help you assess whether your new product is patentable. In a patentability opinion, public records will be researched including domestic and foreign patents, articles, and other public documents that are related to the topic of the product in question. A patentability search seeks to return documents or public records, called “prior art”, which may already disclose some or all unique aspects of the product or how the product is made. This type of search and opinion, however, doesn’t simply look for exact copies of the new product, but instead, also evaluates whether the product in question would have been obvious. Ideally, there may be a few pieces of prior art that are close but either do not disclose the product or would not have rendered it obvious to create the product in question. After the patent search is conducted, the opinion will address the scope of the patent search and discuss the prior art found. Additionally, and most importantly, the report will provide an opinion on whether the product in question is likely to receive a patent based upon the prior art found. It is important to note that the patentability opinion is simply that — an opinion on whether the product is patentable — and is not a guarantee. While it is not a requirement before filing for a patent, a thorough patent search and opinion may also help in deciding whether to pursue the product in question.

Freedom to Operate Opinion
A freedom to operate opinion attempts to assess if there are any patents in the field of technology that potentially impact the ability to make, use, sell, or import prior to releasing the product or process to market. A freedom to operate search is generally conducted after a product is made but before significant time is spent marketing and commercializing it. A freedom to operate search is similar to a patentability search in that it evaluates prior art to determine if there are any existing potentially problematic patents, however, a freedom to operate evaluation also analyzes claims of active patents. If a business chooses to proceed with product development and marketing of a new product, a freedom to operate opinion can assist the business in evaluating potential risks for future law suits and liability. A thorough and competent opinion could protect a business from future liability, and alert the business as to whether any existing patents could be problematic to the marketing of a product. However, the name, freedom to operate can be misleading and it is important to note that, as with a patentability opinion, a so-called freedom to operate opinion is also simply an opinion on whether there are any patents in the field of technology that could potentially impact the business’ ability to produce or market the product.

Non-Infringement Opinion
Unlike patentability opinions and freedom to operate opinions which look at all prior art and existing patents, a non-infringement opinion looks at only specific patents, i.e. active patents in the country or countries of concern. A non-infringement opinion reviews a single patent or a group of patents that are of potential concern and determines whether the business’ product more likely than not infringes on any of those patents. This type of opinion can and should be sought at any time during development and lifetime of a product and during possible acquisitions and mergers to determine if any incoming intellectual property might infringe. It might also arise in the context of an allegation of infringement raised by a patent owner/competitor. As with a freedom to operate opinion, a non-infringement opinion will evaluate the claims of the active patent(s) in question to determine their meaning and breadth, and then provide an assessment whether the business’ product is likely to infringe the patent in question, literally or under the Doctrine of Equivalents. A non-infringement opinion can go a long way in helping a business determine if it should proceed without changes, redesign, seek a license, evaluate the validity of the patent in question, or suspend making a particular product.

Validity Opinion
Lastly, a validity opinion can determine whether the identified patent is valid and/or enforceable. The intent of a validity opinion is slightly different than the previous opinions discussed. A validity opinion may be sought when an existing patent might be infringed by the business’ product, or to assess the strength of a patent (either owned by the business or another) for example, in the context of litigation. The intent of a validity opinion is to determine if the patent claims can withstand a re-evaluation of an issued patent in light of prior art that typically was not previously considered by an Examiner during the patenting process. In addition, or alternatively, the validity opinion may investigate prior uses or offers for sale of the invention by the patentee or a third party. In a validity opinion, prior art will again be searched in an effort to determine all relevant art. Each claim will be interpreted for its meaning and breadth and then compared to the prior art. If all limitations of the claim(s) are fairly shown or would have been obvious this may allow the business to continue with making and selling its product. If some or all of the claims are found to be invalid, the business can proceed with making or selling its product without having to redesign. Additionally, should a business find itself facing a lawsuit over infringement, a validity opinion is also effective in showing that the patent at the heart of the case is invalid and therefore, ending the case.

The four types of patent opinions discussed each serve different purposes and are of different value to businesses at different times. Securing an opinion early in a product development can assist in determining how a product development should proceed and also saving the company money in the long run. While many companies find that the costs associated with requesting an opinion are high, the costs of not having one and then facing legal action are higher.

Theresa is an attorney with Fay Sharpe LLP. If you have questions about the contents of this article or IP law, you may reach Theresa at trakocy@faysharpe.com or 216.363.9207.