Opinions of Counsel A Litigator’s Perspective

Rick MatthewsFriday, February 4

© 2011 Hultquist IP. All rights reserved.

COMMON IP PRACTICE AREAS

• Patents

• Trademarks

• Copyrights

• Licensing

• IP Litigation

• IP Transactional Services

© 2011 Hultquist IP. All rights reserved.

OPINIONS OF COUNSEL

• Not always first considered when researching, developing, designing, fabricating, etc.

• So, why are opinions necessary?

• And, what purpose do they serve? 

© 2011 Hultquist IP. All rights reserved.

OPINIONS OF COUNSEL

Purpose:

• To better determine whether products or processes infringe a valid patent claim (Opinions are not a guarantee of success in litigation)

• To modify design to reduce risk with respect to third party patent – and possibly avoid litigation

© 2011 Hultquist IP. All rights reserved.

OPINIONS OF COUNSEL

Purpose:

• To determine/develop best defenses against patent owner

• To assess risks, possibly to decide not to proceed with a product

• To defend against a willfulness allegation in litigation

© 2011 Hultquist IP. All rights reserved.

OPINIONS OF COUNSEL

Types:

• Non-infringement

• Invalidity

• Clearance (Freedom-to-Operate)

© 2011 Hultquist IP. All rights reserved.

OPINIONS FROM NON-ATTORNEYS

• Refrain from “non-attorney” (e.g., engineer) written opinions, especially negative opinions concerning patents

• Likely will not be privileged

• Might be wrong – but could be used in litigation

• Could undermine correct opinion from qualified U.S. Patent Attorney

© 2011 Hultquist IP. All rights reserved.

THANK YOU

© 2011 Hultquist IP. All rights reserved.