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Strategic Patent Counseling and Opinions

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Patent

Strategic patent counseling turns inventions into enforceable assets and keeps you clear of competitors' patents through patentability assessments, validity and infringement opinions, and freedom-to-operate analysis tied to your business goals.

Good patent strategy starts long before a lawsuit. We counsel clients across the full patent lifecycle, helping you decide what to protect, how to read a crowded patent landscape, and where the real risks and opportunities sit. Because our attorneys come from engineering, we can talk to your technical team in their own language and translate that understanding into patent decisions that actually serve the business.

Is It Patentable

Not every invention is worth a patent, and not every patentable invention is worth filing. We assess novelty, non-obviousness, and subject-matter eligibility, then weigh the strategic value against the cost. The goal is a clear answer on what to file, when to file it, and how to spend a limited IP budget where it earns the most competitive protection rather than spreading filings thin across low-value ideas.

Validity And Infringement Opinions

When a competitor's patent is in your path, a written opinion gives you a defensible basis to act. We prepare formal opinions analyzing whether a patent is valid over the prior art and whether your product or process actually infringes. A well-reasoned, contemporaneous opinion can blunt a later willful-infringement claim and the enhanced damages that come with it, while giving you confidence to make the call.

Freedom To Operate

Before you launch, you want to know whose patents stand in the way. We run freedom-to-operate studies that map the relevant third-party patents, gauge your infringement exposure, and flag claims that look vulnerable to a validity challenge. From there we lay out practical options, from design-arounds to licensing, so you go to market with eyes open rather than discovering the problem after the product ships.

Building A Portfolio

A patent portfolio should track where your business is headed, not just where your R&D has been. We work directly with technical teams to surface inventions, set filing strategies that line up with your product roadmap, and build a portfolio that gives you leverage, whether for defense, cross-licensing, or deterrence. We also train inventors to spot patentable work and contribute usefully during prosecution.

Frequently asked questions

File before you publicly disclose, offer to sell, or sell the invention. The US gives you a one-year grace period for your own disclosures, but most foreign countries do not, so any public disclosure can permanently bar patent rights abroad. If international protection matters to you, file before you tell anyone.

A strong application discloses enough detail that someone in the field could actually build the invention, and its claims cover both your commercial product and the obvious ways a competitor might design around it. Clear claim language backed by solid support in the specification is what holds up if the patent is ever challenged or enforced. A granted patent with narrow or vague claims is easy to avoid and hard to assert.

A well-reasoned opinion can reduce your exposure to willful infringement claims and helps you make a clear-eyed business decision before committing to litigation. Keep in mind that opinions can become attorney work product that may be discoverable, so the timing and scope matter. We help you weigh those tradeoffs before anything is put in writing.

Look at how commercially important the invention is, what your competitors are doing, whether you could actually detect someone infringing it, and how practical enforcement would be. Not every invention is worth the cost of a patent. Sometimes a trade secret or simply moving fast in the market protects you better.

Provisionals let you lock in an early priority date at lower upfront cost, which is useful when you are still developing the invention or testing the market. The catch is you have one year to convert to a full application, and a thin provisional only protects what it actually describes. Treat it as a placeholder, not a substitute for a complete application.

Yes, but software claims get extra scrutiny on patent eligibility after the Supreme Court's Alice decision. The key is framing the invention as a concrete technical improvement, like a faster process or a better way the system works, rather than an abstract idea run on a generic computer. Because our attorneys were software engineers first, we draft the application to describe what the code actually does at that technical level.

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Attorneys who can help

CS
Casey Scott McKay
Attorney
Washington, D.C.
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