Opinion Letters

Three things you should know before beginning any business:  What you do, what your competition does and how to differentiate between them.  The same rationale applies to patents.  Before applying for a patent, you should know what others have done, what you are doing and how to differentiate between them.  A professional patentability search can help with that.  Initially, you may want to preform a patent search using the patent search feature from our website or other internet sites freely available.   In addition, a professional patentability report can help determine the probability of success in obtaining a patent and if the invention meets some of the basic patent requirements, namely that the invention is new and non-obvious. In order to conduct a search, the inventor should complete the invention disclosure form available on our website, including many details of your intellectual creation.

After the inventor completes the invention disclosure form and after a search of relevant records within the United States Patent Office, the Intellectual Property Center can prepare a patentability opinion letter, outlining the scope of patent protection available based on the searched patents and the information disclosed in the invention disclosure form.

Unless specifically requested, foreign patents, periodicals and textbooks are not searched since they are not as well classified. As a result of the patentability opinion letter, the inventor will better understand the novel and new aspects of the invention and be able to identify alternative embodiments of the invention.

A second type of opinion letter is an infringement opinion letter which is typically drafted to address a potential claim of infringement.  If the infringement opinion letter is prepared by a qualified patent attorney in advance of an infringement claim, the opinion letter may be useful in refuting a claim of willful infringement.   Although a patentability opinion letter is similar to an infringement opinion analysis, the scope is different and the results of a patentability search should not be considered conclusive on the issue of infringement as infringement and patentability are two separate issues.

Feel free to contact us to discuss patentability or infringement opinion letters.

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