Putting a procedure in place to ensure that your company will not infringe upon another can save you time, money, and any potential litigation down the road. A non-infringement opinion is a legal opinion and ruling of if a product infringes a given patent. This opinion is given when a company is deciding if a patent is strong enough to enforce and can provide a company with a surefire answer that the use of their patent will not infringe upon another patent.
A validity opinion, also known as an enforceability opinion, verifies the validity and enforceable nature of a patent. This opinion is most helpful for people who are purchasing patents or rights to patents, as well as for inventors who want to ensure active patents are valid.
The purpose of a validity opinion is to identify any strong arguments for invalidating a patent. It comes into play once its been determined that your patent could infringe on an existing patent.
A validity opinion is often used following a clearance search, or it could be necessary if a company receives a cease-and-desist letter. It is standard to obtain a validity opinion during patent infringement litigation.
As part of the process for obtaining this opinion, the full USPTO file history of the patent that is being investigated will need to be reviewed. It’s also pertinent to review the content of any prior art cited against that patent by the patent examiner. In an effort to locate arguments for invalidating a patent, a separate patentability search is also typically performed in order to locate possible prior art that was never considered by the patent examiner before the patent was issued
Minimizing Risk of Infringement
Like all the other opinions that we will discuss below, a validity opinion is a way to minimize any risk of future infringement issues. If an existing patent is found to be invalid or otherwise unenforceable, an inventor might decide to look into other options.
Why a Non-Infringement Opinion is Necessary
A non-infringement opinion is given when a company decides to protect their intellectual property and when an opinion is given it can prove that no willful infringement took place.
At the beginning of the patent process, you’ll want to make sure that your invention is unique and, most importantly, patentable.
Part of this process of determining patentability involves patent opinions. A patentability opinion is a legal opinion that will provide you with how likely it is that your invention will be able to receive a patent from the United States Patent and Trademark Office (USPTO).
Types of Patent Opinions
There are various types of patent opinions, but the most common types are the:
- Patentability opinion
- Right-to-use opinion
- Non-infringement opinion
- Validity opinion
Each opinion serves a unique purpose in determining if your invention can be patented. You will want to use these opinions as way to help ensure the commercial or legal success of your invention and your business potential.
Patentability opinions are in place to answer the question of if your invention is eligible for patent protection. Typically, a patentability opinion goes along with a patent search, because a significant part of determining the patentability of an invention is based on prior patents.
A patentability opinion employs a search of prior art to find patents and inventions that are similar or that may present legal issues should they be submitted for patent.
A patentability opinion will also take a look at the invention to determine if it meets the USPTO’s requirements for a patent.
A creation must have the following qualities:
- have some usefulness (utility), no matter how trivial
- be novel (that is, be different from any previous invention in some important way)
- be nonobvious (a surprising and significant development) to somebody skilled and who understands the technical field of the invention.
“Novel” and “Nonobvious”
A patent must be “novel”. When it comes to patent application, an invention is considered “novel” when it is unique and different from all previous inventions (called “prior art”) in one or more of its elements. When determining whether an invention is novel, the USPTO will consider all prior art in existences as of the date of the newly submitted piece’s patent application.
It’s important to note that an invention can fail the novelty test if it was described in a published document or put to public use prior to the date the patent application was filed. The only exception is if the actual inventor-applicant created the publication the piece was filed in and that publication was made up to one year before the filing date.
Because of this, it is always advised that an inventor not to publish any information about their creation before filing a patent application. By doing so, the inventor will lose foreign filing rights and another person may see the publication and file a separate application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding.
Additionally, an item or idea can be deemed ineligible if it is obvious or common. A person is not able to receive a patent on an item that is already common, such as a fork, simply because no one else has thought to patent the item yet. There must be something special or creative about the invention.
A Patent Must be “Nonobvious”
In addition to being “novel,” an invention must also be “nonobvious”. An invention is considered nonobvious if someone skilled in the particular field of the invention would view the invention as an unexpected or surprising development.
The right-to-use opinion provides a look into other patents that the inventor’s product may infringe upon. This opinion gives the inventor clearance to pursue production.
This opinion identifies any existing patents that are similar enough to bring up potential infringement issues. A right-to-use opinion also includes legal solutions that can help an inventor work around any chances of infringement. In many ways this opinion can help inventors determine whether or not they want to continue pursuing the invention and the patenting process.
While the right-to-use opinion focuses on infringement issues in general, the non-infringement opinion looks at specific patents and inventions in order to determine exact infringement issues an investor might face.
The non-infringement opinion examines specific claims rather than the invention on the whole. This opinion also provides an inventor with a breakdown of the features, functions or characteristics that must be altered in order to receive patent protection.
This opinion is often used for competing inventors or companies that have similar products but want to avoid infringement conflicts.
A validity opinion verifies the validity and enforceable nature of a patent. This opinion is most helpful for people who are purchasing patents or rights to patents, as well as for inventors who want to ensure active patents are valid.
Like all the other opinions, the validity opinion is a way to minimize any risk of future infringement issues. If an existing patent is found to be invalid or otherwise unenforceable, an inventor might decide to look into other options.
Help with Patent Opinions
Patents are a significant intellectual property investment. Because of this, it’s always advised that you perform due diligence at the beginning of the process to save time, money and potential conflicts in the patent process.
Patent opinions are an important part of the diligence process, and working with an intellectual property attorney can provide you with a certain amount of legal assurance before pursuing an invention.
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides patent services to protect the inventions that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent enforcement and how to avoid possible infringement issues.
Our patent attorneys actively and aggressively represent plaintiffs and defendants in a wide variety of proceedings before courts both domestically and internationally. We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.