Preparing or Evaluating Freedom to Operate, Non-Infringement, and Invalidity Opinions For a Business Transaction
Due diligence in a corporate transaction often involves investigating a business entity’s position with respect to the patent landscape. This typically involves preparing or reviewing opinion letters from counsel. This paper addresses how such patent opinion letters are prepared or evaluated.
A freedom-to-operate opinion letter typically involves a “product clearance” investigation to proactively identify and dispose of patents in the area of the entity’s products, thereby proactively reducing the risk of subsequent patent problems. Close patents are typically analyzed in separate non-infringement opinion letters.
A non-infringement opinion letter distinguishes a product or service from close patent claims by first construing the claims within the analytical framework set forth by judicial precedent, and then reading the claims upon the product to establish no infringement, both literally, and under the doctrine of equivalents. The non-infringement letter serves to avoid known problems, for example, to validate that the product has properly been “designed-around” problematic patent claims of others. More typically, the non-infringement letter serves to avoid enhanced damages from willfulness, should the product ultimately be found to infringe such problematic patent claims.
An invalidity opinion letter serves to neutralize patent claims that cannot be avoided, if it can be determined that such patent claims are invalid. Invalidity analysis typically involves first construing the claims, then reading the claims on the prior art to determine whether the claims are valid. Like the non-infringement opinion letter, the invalidity opinion letter serves to avoid known problems and to avoid enhanced damages from willfulness.
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A freedom-to-operate opinion letter typically involves a “product clearance” investigation to proactively identify and dispose of patents in the area of the entity’s products, thereby proactively reducing the risk of subsequent patent problems. Close patents are typically analyzed in separate non-infringement opinion letters.
A non-infringement opinion letter distinguishes a product or service from close patent claims by first construing the claims within the analytical framework set forth by judicial precedent, and then reading the claims upon the product to establish no infringement, both literally, and under the doctrine of equivalents. The non-infringement letter serves to avoid known problems, for example, to validate that the product has properly been “designed-around” problematic patent claims of others. More typically, the non-infringement letter serves to avoid enhanced damages from willfulness, should the product ultimately be found to infringe such problematic patent claims.
An invalidity opinion letter serves to neutralize patent claims that cannot be avoided, if it can be determined that such patent claims are invalid. Invalidity analysis typically involves first construing the claims, then reading the claims on the prior art to determine whether the claims are valid. Like the non-infringement opinion letter, the invalidity opinion letter serves to avoid known problems and to avoid enhanced damages from willfulness.
Read full article
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