Patent Infringement Opinion

A patent infringement opinion is a type of legal opinion offered by expert patent lawyers who apply the law to your specific set of facts. It often helps a person or company decide whether there is a valid right that protects a patented product. If there is a valid right, then anyone who attempts to use, make, or sell it could be liable for infringement.

Types of Patent Opinions

  • Patent opinions help determine whether a product is patentable based on a thorough search of public records and databases that determines whether there is already a similar product that is patented and on the market. Similar products are often called “prior art,” and, if protected by a patent, could potentially prevent your product from being patentable. A patent attorney should consult the patent class system database and review the most relevant resources to determine whether the product is, in fact, original.
  • Infringement opinions are useful when a person or company owns a patent and they believe it may have been infringed. The opinion can help determine whether to pursue legal action against the infringer.
  • Validity opinions can help a company determine whether to file a lawsuit, or in the alternative, enter into a licensing agreement with the second party. Validity opinions are often the first step if a company believes someone has infringed on its patent.

Patent Infringement

If a court finds that someone willfully infringed on an owner’s patent, it can award the patent owner higher monetary damages that are meant to be punitive, on top of the actual damages caused by the infringement. A “willful infringement” is an infringement where the infringer had a high likelihood of knowledge that its actions constituted an infringement of a patent.

However, if the person accused of infringement did so relying on a valid infringement opinion, he or she can establish a reasonable basis for trusting that his or her actions were not infringing on a valid patent. That is why getting an infringement opinion is so crucial to defending an infringement claim. But while useful, juries will consider many more things other than the infringement opinion in determining whether infringement occurred.

The “Halo Decision”

In Halo Electronics, Inc. v. Pulse Electronics, Inc., the United States Supreme Court handed down a ruling that changed two significant aspects of a willful infringement framework.

1. The Supreme Court first changed the “objective” standard and instead relied on a test that would prevent a defendant from shielding themselves with merely a “reasonable” defense. The new test would consider wanton and maliciousness. Because these are subjective standards, the Court essentially removed a defendant’s ability to file a motion for summary judgement — a request that the court rule that there are no facts at issue, and thus the case should not go before a jury, or a jury could only rule in favor of the party who made the motion.

2. The Supreme Court then relaxed the standard of proof from “clear and convincing evidence,” to a “preponderance of the evidence,” which is an easier standard to meet.

The Halo decision provides lower courts with a description of what kind of conduct it believes constitutes enhanced damages for willful infringement.

If you find yourself involved in a legal action regarding willful infringement, a patent attorney should be contacted as early as possible. He or she will help launch a legal strategy and defense against a willful infringement claim. This will turn into a patent infringement opinion where the attorney must include a thorough analysis in order for the defendant to claim an honest belief that he or she did not infringe on the patent. In addition to assessing the validity of the infringement claim, a thorough opinion will also assess the actual risk of infringement.

After a lawsuit is filed against the alleged infringer, a patent attorney will diligently conduct research while always maintaining the client’s validity and non-infringement claims. This lessens the possibility that a court will rule against the defendant for willful infringement and also reduces the chance that the court will award higher damages.

If you need help with patent infringement, you can post your legal need 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, Menlo Ventures, and Airbnb.