Drafting Patent Validity Opinions

Patent validity opinions from Attorneys can be useful and are sometimes necessary when evaluating whether a technology or a process of a technology violates a patent. Validity opinions can help you avoid or reduce your exposure to enhanced damages under 35 USC § 284; can provide a road map for designing around processes already claimed by a patent; or can be a step in preparation for pending litigation. Also a well drafted patent validity opinion may serve to educate you on the technology in a general manner; may provide insight into prior art that could affect the patents owned by you; and may be used as a tool to address concerns held by potential purchasers or investors in your technology..

The first step when drafting a patent validity opinion is to determine the scope of the technology claimed by the patent. Your technology or process may not fall within the technology claimed by the patent. The next step is to determine whether the patent is valid. To determine the validity of patent, a good starting point for the Attorney is to obtain a copy of the patent from the USPTO's file wrapper. The file wrapper will contain a copy of the application and the various communications between the applicant for the patent and the USPTO prior to the patent being issued. The information in the file wrapper can provide valuable insight into thoughts of the examiner who found the material to be patentable. The file wrapper will also provide details about the prior art cited by the examiner which can serve as a guide on which areas a search for prior art should be focused.

When drafting a patent validity opinion, it is important that the Attorney be objective. The opinion should consist of objective analysis and should not be littered with conclusory remarks or statements that are subjective. The Federal Circuit has upheld jury decisions of willfulness in cases where the invalidity opinion did not contain proper analysis and substance. The patent validity opinion must also be accurate legally and factually; and should exhaustively discuss the applicable facts and theories. For example, in order for a patent to be issued, the technology must be useful, novel and nonobvious. Technology is useful if it can serve a useful purpose; technology is novel if it is not disclosed by prior art; and technology is nonobvious if it is not obvious to one skilled in the art through which the technology was developed. Also, it would be necessary to consider all the claims in a patent separately, even though it is possible that all the claims could be invalid.

Given, the high stakes that surround reliance on a patent validity opinion, it is important that individuals or companies find a competent attorney to produce an objective, accurate and detailed patent validity opinion in writing. Also it is important to note that a patent validity opinion may be of little benefit in a court of law if one does not observe the recommendations and the information contained within the pages of the patent validity opinion