PATENT OPINIONS
Infringement, non-infringement, and validity opinions you can rely on.
A written opinion from patent counsel gives decision-makers a reasoned view of risk before a launch, after a demand letter, or once a case is filed. Each opinion is grounded in the claims, the full prosecution history, including any continuations, ex parte reexaminations, or prior IPRs, and the prior art, and is written to stand up if it is ever scrutinized. We have prepared non-infringement and invalidity opinions for Fortune 100 companies.
When companies need an opinion
Before a product launch
Freedom-to-operate and clearance opinions that identify patents of concern and explain why the product does or does not fall within their claims.
After a demand letter
A prompt, reasoned assessment of the asserted patent so you can decide whether to license, design around, challenge, or defend.
During litigation
Non-infringement and invalidity opinions that support case strategy, settlement evaluation, and reliance on advice of counsel.
Design-arounds
Practical guidance on changes that move a product outside the claims, reviewed against the prosecution history.
Complex file history? That's often where the answer is.
COMPLEX FILE HISTORIES
When a patent has a long prosecution history, a family of continuations, an ex parte reexamination, or a prior IPR, the claims may cover less than they appear to. Arguments and amendments made to the examiner or the Board can narrow claim scope through prosecution history estoppel and disclaimer, and those limits often decide infringement. We work through the full record so the opinion reflects how a court will read the claims.
IPR and ex parte reexamination are specialized proceedings, and hands-on experience in them is uncommon, even among patent attorneys. Our founder has drafted IPR petitions, argued before the Patent Trial and Appeal Board, and handled ex parte reexaminations, so we read the record the way the examiner and the Board did.
Opinions and willfulness
Since Halo Electronics v. Pulse Electronics, enhanced damages turn on the culpability of the infringer's conduct. A competent opinion obtained in good faith remains one of the clearest ways to show reasonable reliance on the advice of counsel. Under 35 U.S.C. § 298, the absence of an opinion cannot be used to prove willfulness, so the value of an opinion lies in having one when it matters.
What an opinion covers
Claim construction grounded in the specification and prosecution history
Element-by-element comparison to the product or process
Doctrine of equivalents and prosecution history estoppel
Validity analysis against the prior art where relevant
Clear conclusions and the reasoning behind them
Frequently asked questions
What is an infringement opinion used for?
An infringement opinion is usually requested by a patent owner. It compares a competitor's product or process to each element of your patent's claims, in light of the prosecution history, to determine whether it infringes literally or under the doctrine of equivalents. Patent owners use it to decide whether to send a demand letter, pursue a license, or file suit, and to support the pre-filing investigation counsel must do before bringing a case.
What is a non-infringement opinion used for?
A non-infringement opinion is usually requested by a company facing someone else's patent, before a product launch, after a demand letter, or during litigation. It explains why the product does not meet every element of the asserted claims, often relying on what the patent owner gave up during prosecution. Companies use it to make launch and design-around decisions, to evaluate license or settlement demands, and as evidence of good-faith reliance on advice of counsel if willful infringement is alleged.
Does a complex file history change the opinion?
Often, yes. When a patent has continuations, an ex parte reexamination, or a prior IPR, the arguments and amendments made along the way can narrow what the claims cover, and statements made in a related patent's prosecution can affect how the same terms are read. An opinion that looks only at the issued claims can miss those limits. We review the full record, including related patents in the family, so the opinion accounts for them.
What is a freedom-to-operate opinion?
An analysis of whether a product or process can be made and sold without infringing the unexpired claims of identified patents.
Does an opinion protect against enhanced damages?
An opinion obtained in good faith is evidence that the company acted reasonably, which bears on willfulness and enhanced damages. It is not a guarantee.
How long does an opinion take?
It depends on the number of patents and claims and the complexity of the product. Timing is set in the engagement letter.
Can the opinion be shared with the board or investors?
Yes, with care. Sharing an opinion can affect privilege, so how it is shared should be decided with counsel.
How are opinions billed?
On an hourly basis, scoped in an engagement letter after a conflicts check.