Opinions

• Author: Arti Kane
• Pages: 97-110

97

Opinions

Patentability Opinions

As its name suggests, a patentability opinion is a legal opinion that

analyzes whether an invention is likely to satisfy the requirements for

the grant of a new patent. In rendering a patentability opinion, the pat-

ent attorney will conduct a prior ar t search and review the relevant prior

art to determine whether the invention appears to meet the patent office

requirements of usefulness, novelty, and non-obviousness.

Freedom to Operate Opinions

A freedom to operate opinion is typically solicited when a business is

planning to release a new product or process. The primary objective of a

freedom to operate opinion is to determine whether there are any prob-

lematic patents in the field of technology prior to releasing the product

or process to market. In other words, the business wants to know their

risk of being sued for patent infringement if they launch a new product or

process. When relevant in-force prior patents are located, the freedom to

operate opinion is generated by considering the entire file history of the

patent, not just the patent itself.

Infringement Opinions

An infringement opinion is somewhat similar to a freedom to operate

opinion with one primary exception: The patent that creates the basis

for liability is known and does not have to be located through a pr ior

art search. Typical infringement opinions will construe the claims, and

then compare the claims to the product to determine whether the prod-

uct infringes any of the claims. As with a freedom to operate opinion, an

infringement opinion must be made in light of the patent file history to

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