Patent Opinion Services

THE WADDEY & PATTERSON DIFFERENCE

With regard to Freedom to Operate and other opinion work, in particular, the key to cost effectiveness is communication with the client and deep involvement of a knowledgeable client representative in the review process. A great deal of money can be spent grinding out written opinions on every possible conflict.  If the client is willing to be involved in truly understanding the various degrees of risk presented by different matters, it is often the case that the risk does not really justify the preparation of formal opinions.  But that requires a knowledgeable client representative who has the authority and competence to say that he/she understands a particular risk and has concluded that it does not justify a formal opinion.

For global Freedom to Operate work, it is our practice to begin with an English language text based search of a global database by a professional search organization.   We use the results of that search as the database for our U.S. clearance, and as the starting point for clearance in other key countries.  As most major competitors will be operating on a global scale, this English language search will typically identify the key patent families because they will have one or more members that are in the English language database.  Any reference located in this search will include identification of all corresponding family members around the globe, regardless of language.  Then as the opinion work migrates into other jurisdictions we have local counsel supplement our original search by conducting native language searches in any available local databases.

Often, a timely and well-considered pre-assessment of the patentability of intellectual property can result in considerable savings of time and financial resources. Waddey & Patterson offers patent opinion services in order to accurately pre-assess the patentability of a wide variety of intellectual property interests.

CASE STUDY :: HOW W&P ADDS VALUE

For a large medical device company, we were able to provide a freedom to operate opinion within a month, so decision-makers could act in a timely manner.

In working on an invalidity opinion, we proposed providing the client with a letter stating objective facts in which a U.S. patentee admitted that the claims as issued in the United States were unpatentable over patents not considered by the U.S. patent examiner who issued the case thereby saving our client ten thousand dollars and avoiding an argument that may adversely affect the validity of our client’s patent.

For several clients, we regularly perform worldwide freedom to operate reviews for them.  Wayne Beavers, one of our senior attorneys, has primary responsibility for conducting the freedom to operate work for that account.

We have also been able to advise a client that a full Freedom to Operate opinion is not necessary in a non-core business area, by conducting a search for expired prior art covering the subject matter.

AVAILABLE SERVICES

• Patentability opinions
• Non-infringement/Infringement opinions
• Invalidity/Validity opinions
• State of the art searches
• Freedom to operate opinions

Patentability opinions allow our clients to determine whether it is reasonable to proceed with filing a patent application.

Non-infringement/Infringement opinions allow our clients to determine whether a product or service should be offered by them in light of a known patent. We review the relevant products and services in light of the patent and the file history for the patent.

Invalidity/Validity opinions allow our clients to determine a patent being asserted against a product or service or owned by them is or is not valid. We find and compile disclosures that are prior art to a specific patent and apply the prior art to the patent claims.

Freedom to operate opinions allows our clients to determine whether a product or service should be released. We determine a search strategy that is likely to uncover relevant patents in the United States and/or worldwide.