Patent Searches, Opinions
What are the common searches and opinions?
A preliminary novelty search is done, as described above in the Patent Drafting section, to find prior art similar to the invention. This search can provide insight on the applicant’s prospects for getting significant patent protection.
However, there also may exist an issue as to whether the invention would infringe upon someone else’s patent. To avoid such infringement, it is common for the applicant to get a right-to-use opinion (also known as a “freedom-to-operate opinion” or “clearance opinion”). This opinion can help the applicant to avoid making an investment in a product or process that would be vulnerable to a charge of patent infringement, and may also serve as a legal defense to higher damages. The right-to-use opinion would be made based on a right-to-use search for non-expired patents that might potentially be infringed by the invention.
A validity opinion is an opinion on the validity of a patent. An already issued patent is still subject to being challenged, as to its validity, in court or in the Patent Office. For example, the patent may not distinguish patentably over the now-known prior art or may not pass muster on other grounds, even new legal grounds. It is common to call for a validity opinion on a patent that, from a right-to-use search, was found to have claims that could be infringed by the production, use, or sale of the invention.