Patent opinions come in multiple forms including: non-infringement, clearance, and infringement.
A non-infringement opinion compares a client’s product to the patent of another. It acts as a defense against a charge of willful patent infringement, and when properly drafted, acts to dissuade the court from a finding of exceptionality.
A clearance opinion is similar to a non-infringement opinion, but broader. Rather than focusing on only one patent, a clearance opinion considers the claims of multiple patents owned by other parties. The result is also a defense to a charge of willful infringement.
An infringement opinion is drafted from the opposite perspective — that of the patent holder. The process of drafting the infringement opinion creates the required well-founded basis for a claim of infringement, supporting subsequent step of filing a patent infringement lawsuit.
For any opinion, the first step is to conduct due diligence to review the device in question.
Client shares technical information
The client must determine which devices are to be reviewed for potential infringement. After the devices are identified, the client shares technical information with counsel. Comprehensive technical information is recommended to allow counsel to craft well-supported opinion.
A patent search is conducted
Following a review of the devices by counsel, a patent search is conducted. The breadth of the search varies depending upon the goals and budget of the client. The patent attorney reviews the uncovered patents.
A portion of the patents may sometimes be immediately discounted, thus eliminating in-depth review.
The patent attorney reviews the remaining patents in order of applicability to the technology.
The time required to perform this analysis depends on the quantity of patents and the complexity of the technology.
Preliminary discussion with client
With the relevant patents in hand, a patent attorney consults with the client to discuss the results of the patent search. The meeting is necessary to draw on client’s technical expertise and discuss any potential issues discovered during the preliminary patent review.
During this consultation additional patents may be deemed inapplicable, or the product design altered to reduce the likelihood of a later determination of patent infringement.
Claim chart construction and comparison
With a thorough understanding of the device and the patents at issue, the process enters its most critical step —creation of claim charts to determine whether the patent claims read on the device.
A claim chart is a distillation of each patent into its claims, and each claim into its limitations. Following claims distillation, support is located within the specification and drawings of the patent for each limitation. This support is used to define claim limitations, resulting in a claim construction.
The construed claim limitations are then compared to the product. If every claim limitation exists as an element of the device, infringement exists. Generally, if even one claim limitation is missing from the device, infringement does not exist.
Informal client discussion
Following the work above, counsel will possess adequate information to share a determination of whether the device is likely infringing or non-infringing.
At this point the client may instruct counsel to draft the opinion, or cease work.
Drafting written opinion
If the client instructs the patent attorney to draft the written opinion, counsel drafts a detailed review of the claims, defines claim limitations, and presents patent prosecution history.
A thorough non-infringement opinion is self-contained, providing a background of the law at the time, the prosecution history of the patent in question, analysis of the claims, explanation of the product in question, and a determination of non-infringement in light of the law, claims, and accused product. The result is a lengthy, but effective, non-infringement opinion that a court can rely upon when determining whether the client behaved appropriately when proceeding to make the device.