What Is a Non-Infringement Opinion?

Non-infringement opinions are considered when deciding whether a patent is strong enough to enforce against another. Also sometimes called a clearance opinion, a non-infringement opinion can give another individual or company the right to use a patented work because it has been determined they are not infringing on the patent.

If a company wants the right to work with something that is patented, they can ask for a non-infringement opinion to avoid being sued by the patent owner or they can apply for a patent license. This can be an expensive and complicated process, so it tends to only come up in cases surrounding very influential and valuable patents.

Is My Invention Patentable?

When asking yourself if your idea or invention is able to be protected by a patent, you should also wonder if it might infringe on a patent that already exists. These questions refer to two important aspects of intellectual property rights (IPR):

  • Patentability
  • Infringement

These are two sides to the same coin, but with very different processes and expenses. Both consider whether an idea is worth the process of moving forward with creating and marketing it.

In order to determine if a work is worth protecting with a patent, you'll need to evaluate its marketability and earning potential. A huge part of marketability is whether it will infringe on another patent. You can't make money from something that you don't own the rights to.

These are big decisions in the world of creating, so it is a good idea to get a patent lawyer involved. He or she can help you consider the risks and decide the best action.

What Is Infringement?

In order to sue for patent infringement and win, the owner of the patent must be able to prove that the infringer intended to infringe on his patent. This burden of proof on the patent owner is stated under a Federal Circuit law.

When a party is sued for infringement, he can sometimes rely on a non-infringement opinion or invalidity opinion.

How To Determine If Your Invention is Patentable

The first step in deciding if you should begin the patent process for your invention is finding out if it can even be patented. Contact a patent attorney to help you conduct a search and make an informed decision.

Anyone can search the United States Patent and Trademark Office online database to see if a patent already exists for an invention similar to the one he hopes to patent. This database also shows patent applications that are published but not yet granted. Needless to say, if a patent already exists for the invention, or something similar to the invention you hope to protect, you will not be able to get a patent granted for it.

A patent attorney can help you determine whether any currently patented inventions are too similar to yours and help you make yours more unique if necessary.

If it is decided that your invention can and should be protected by a patent, you can fill out an application with the USPTO. The process can take up to a year or longer if issues arise.

How to Conduct a Preliminary Non-Infringement Evaluation

If there are patents found during your search that are similar to your invention or have similar aspects, a patent attorney will evaluate the similarities and give you an estimate about whether he thinks you'd run into any infringement issues. Any patents that the lawyer considers to be a potential infringement problem will be marked for a deeper assessment.

A deeper look into the background of the patent in question will reveal more about the similarities between it and your invention. Once the attorney has considered the full scope of the patented invention and the invention that you hope to patent, he can come to a non-infringement opinion.

If the lawyer decides there isn't a potential for an issue of infringement, this opinion can be used in court if the patent owner of the patent in question would try to sue for infringement once you took your invention to market.

If you need help with a non-infringement option, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.