A patent infringement opinion is an evaluation of whether a proposed
product or design would infringe an existing patent. In order to render a
complete and valid opinion, a qualified patent attorney must refer to the
issued patent and all the documentation generated in obtaining the
patent (known as the prosecution file or file wrapper). The attorney will
evaluate the patent and its claims and then compare the patent with the
proposed product or design in order to determine whether it would
infringe directly and/or under the doctrine of equivalents.
In many instances, evaluation of a patent will depend upon the patent
history as reflected in the patent prosecution file. By reviewing that file, a
patent attorney can determine what aspects or interpretations of the
patent may have been abandoned in return for the Patent Office
agreeing to issue the patent.
After a careful analysis of the scope of protection offered by the patent,
for each separate patent claim, reference is made to each protected
element and directly compared with each of the elements present in the
proposed product or design. In order to find infringement, every element
in at least one claim of the patent must be found to exist in the proposed
product or design (or its equivalent). It is important to note that the
proposed product or design need not infringe all claims in the patent,
only one. Non-infringement occurs when and if the proposed product or
design lacks one or more elements for each of the patent claims.
An infringement opinion is particularly useful, and in fact often
necessary to avoid the sanction of treble damages and attorney's fees
which may be awarded in cases of willful infringement. An opinion of
non-infringement, from a qualified patent counsel, having full knowledge
of all relevant facts, may be worth it's weight in gold if you find yourself
in court.
If you've already manufactured the goods or distributed the product,
and received a notice of infringement, an infringement opinion can help
you understand your rights and decide on a course of action. It is
possible, after a careful evaluation of the patent, that existing product
lines or research and development of new products can be salvaged by
"designing around" the patent, and avoiding infringement.
These materials have been prepared for informational purposes only and are not legal
advice. This information is not intended to create, and receipt of it does not constitute, a
lawyer-client relationship. Internet subscribers and online readers should not act upon this
information without seeking professional counsel. Do not send us information until you
speak with one of our lawyers and get authorization to send that information to us.
for your own personal use and for non-commercial distribution. All copies must include this copyright statement.
