Patent Validity Opinion
When
a company is accused of patent infringement or is seeking to acquire rights
to a patent, the question typically arises: “Is the patent valid and
enforceable?” In
the case of a patent infringement, proof of “invalidity” or “unenforceability” is
the first line of defense. In license or acquisition situations, if the strength
or validity of the patent is put in doubt, the value of the patent declines
significantly.
The first step in determining
the validity of a patent is to check whether the patent term has expired
or the maintenance fees have not been paid. Provided
the patent is still valid, a request for a “patent validity opinion” is
typically lodged with the company’s patent attorney or law firm. The
attorney generally orders or obtains a copy of the patent’s “file
wrapper” from
the patent office. The file wrapper is a complete copy of the prosecution history
of the patent, namely the back and forth correspondence between the applicant
(via the attorney) and the patent office from the filing of the original application
to the issuance of the patent, as well as any corrections submitted after the
patent issued. The file wrapper is used to determine the scope of the claims
by taking into account limitations within the file wrapper. The claims are
analyzed in comparison to the alleged infringing product to assess the strength
or merits
of the suit.
The attorney may also arrange
or conduct a “patent validity
search” in
an effort to find additional prior art that may not have been known to the
Examiner or the Applicant at the time of the filing and prosecution. This is
a search
not unlike a patentability screening search for a new invention, except that
it is based on the issued claims of the patent of interest rather than on a
description of the invention. A patentability screening search and opinion
is normally requested
by the patent applicant, prior to filing an application; a patent validity
search and opinion is normally requested by a third party, after a patent has
issued.
When the search is complete,
the patent attorney, sometimes in collaboration with the client, will examine
and compare the search results with the issued
claims, and seek to determine if and to what degree it can be argued that
the claims “read on” or were anticipated or made obvious by the prior
art publications. In the case of an infringement challenge, a formal opinion
as to the validity is usually combined with an analysis of the other possible
defenses to infringement.
An independently rendered formal legal opinion on patent validity and infringement,
that was favorable to the defendant’s position, is an important legal
device that may protect the defendant against an excessive damages award
in the event there is a later judicial finding of infringement.
Patent law and the implications of a patent validity opinion are complex legal
matters for which professional counseling is essential. Consult any of the
registered patent attorneys at Vern Maine & Associates:
Additional Patent Information:
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