opinions of counsel a litigator’s perspective rick matthews friday, february 4 © 2011 hultquist...
TRANSCRIPT
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.