Opinions & Counseling
The firm renders opinions and provides counseling to clients regarding a broad range of intellectual property issues, including non-infringement analyses and opinion preparation, freedom to operate (FTO) product clearance studies and related patent non-infringement and invalidity opinions, design-around consultation, patentability opinions, trademark clearance opinions, preparing agreements, and strategic portfolio management.

Patent Non-Infringement & Invalidity Opinions

We are experienced in analyzing patents of interest that have come to the attention of clients in connection with their products.  For example, our client may have received a cease and desist letter from a competitor that charges our client’s product with infringement of the competitor’s patent.  We review and study the patent, analyze the patent’s claims, its file history, and related prior art, and advise our client regarding the merits of the competitor’s charge of patent infringement.  This process also includes preparing and rendering non-infringement and/or invalidity opinions.

Freedom To Operate Opinions

The purpose of a Freedom To Operate (FTO) opinion is to give our client an assessment of potential risks that our client's existing or planned product or service will run afoul of third party intellectual property (IP) rights.  The focus of an FTO study and opinion will typically focus on patent rights in the country(ies) of interest.  The first step is for us to study and understand the client’s product or service that will be the subject of the study.  The next step is to conduct the necessary searching to locate and identify patents that may be of interest.  Those patents are then studied to determine if they are sufficiently close to merit further study.  After narrowing the list of patents to those that require detailed study, we engage in a non-infringement and invalidity study as described above.  Based on our findings, we advise the client and render our FTO opinion.

Design-Around Consultation

In those instances where we believe that our client’s existing or planned products or services may potentially violate third-party IP rights, we are skilled at working with our clients to “design around” the third-party rights by making modifications to our client's accused product or service.  For example, we are experienced at identifying elements or limitations in patent claims that can be removed from our client’s product or service so as to avoid infringement.

Contact us at no charge to discuss any questions you may have about the opinion and client counseling services we offer.