IP Opinion Letters

Formal Legal Analysis Supporting Business Decisions and Risk Management

Intellectual property opinion letters provide formal legal analysis of specific IP questions, typically addressing infringement risk, validity of client or third-party rights, or freedom to operate for proposed activities. Unlike informal advice, opinion letters are carefully crafted documents that may serve multiple purposes including supporting business decisions with thorough analysis, demonstrating good faith to avoid willful infringement findings, satisfying investor or lender due diligence requirements, and meeting insurance or indemnification prerequisites. This practice provides rigorous opinion work across patent, trademark, copyright, and trade secret matters.

Non-Infringement Opinions

Non-infringement opinions analyze whether a client's proposed product, service, or activity would infringe specified patents, trademarks, or copyrights. Patent non-infringement opinions involve detailed claim construction analysis comparing patent claims to the accused product or process element by element. Trademark non-infringement opinions evaluate likelihood of confusion factors. Copyright non-infringement opinions assess substantial similarity and fair use considerations. Opinions must be thorough and well-reasoned to serve their intended purposes, but must also provide actionable conclusions that support business decisions.

Invalidity Opinions

When clients face assertion of third-party patents or other IP rights, invalidity opinions analyze whether those rights are likely valid and enforceable. Patent invalidity analysis examines prior art, claim scope, prosecution history, and potential grounds for invalidity including anticipation, obviousness, enablement, written description, and indefiniteness. Trademark invalidity analysis may address abandonment, genericness, fraud, or priority issues. Invalidity opinions can support decisions about design changes, licensing negotiations, or litigation strategy.

Freedom to Operate Opinions

Freedom to operate opinions provide comprehensive analysis of IP risk for proposed activities—typically product launches or technology implementations. Unlike focused non-infringement opinions addressing specific patents, FTO opinions survey the relevant IP landscape to identify and analyze all potentially relevant third-party rights. This broader scope requires systematic patent searching, landscape analysis, and evaluation of identified references. FTO opinions support major business decisions by providing thorough risk assessment.

Patentability Opinions

Before investing in patent prosecution, clients may seek opinions on whether proposed inventions are likely patentable. Patentability opinions analyze novelty and non-obviousness in light of prior art, evaluate potential claim scope, and assess prosecution prospects. These opinions help clients make informed decisions about where to invest patent prosecution resources.

Opinion Standards and Methodology

Effective opinions follow rigorous methodology to ensure reliability and defensibility. Thorough factual investigation ensures opinions are based on complete and accurate information. Comprehensive legal research identifies and analyzes relevant authorities. Balanced analysis addresses both favorable and unfavorable factors rather than advocating predetermined conclusions. Clear reasoning explains the analytical path from facts and law to conclusions. Appropriate qualifications acknowledge limitations and uncertainties. Opinions that cut corners on methodology may fail to serve their intended purposes.

Willful Infringement Considerations

A primary purpose of many infringement opinions is establishing good faith reliance that can negate willfulness findings. Under current law, willful infringement requires proof that the infringer acted despite subjective knowledge of infringement. Opinions from competent counsel, reasonably relied upon, can provide evidence negating willfulness. However, opinions must be genuine exercises of professional judgment, not merely protective paperwork. Counsel provides opinions meeting the standards necessary for legitimate reliance.

Privilege and Work Product Considerations

Opinion letters involve sensitive legal analysis that clients typically wish to protect from disclosure. Opinions are generally protected by attorney-client privilege and work product doctrine, but these protections can be waived—sometimes inadvertently. Careful attention to privilege preservation is essential from the outset. When opinions may be disclosed in litigation or other contexts, implications of disclosure must be considered and managed.

Opinion Updates and Maintenance

IP landscapes change over time as new patents issue, claims are construed in litigation, and products evolve. Opinions based on outdated facts or law may no longer support good faith reliance. Counsel advises on when opinion updates are warranted and provides updated analysis as circumstances change. Ongoing attention ensures opinions continue serving their intended purposes.