Patent Analysis

Legal Opinions: Determining the Metes & Bounds of Invention

Intellectual Property Firms

Legal opinions serve as foundational elements of every aspect of asset management – for intellectual property, the mother of all IP transactions. They clarify what exactly the asset is, what is its scope, who is its owner, and what restrictions apply to it – the cornerstone for building an IP strategy. Moreover, IP assets in particular are strengthened by such clarification due to the fact that intellectual property as an intangible asset leaves a lot of room for interpretation. Carving out one’s stake of exclusivity from the white space of the public domain is critical to being able to enforce such IP rights legally, and ensure smooth sailing ahead.


Such opinions are interconnected with many other parts of the process of securing and monetizing IP rights – from performing a trademark and patent search, due diligence, portfolio valuation, and risk assessment to proactive IP management, advisory guidance, competitive intelligence, IP finance, and strategic patent-pool structuring. Intellectual property firms specialize in such activities.


In most opinion engagements, a search report – resulting from performing patent analysis of closely-related references – serves as the basis for the opinion. For patentability opinions, a patentability search report details prior-art references in the field of a given invention both in the patent and non-patent literature in the public domain. Sketching the borders of the invention is the role of the search report; determining the metes and bounds of invention is the domain of the opinion.


For validity opinions, a validity search report is used as the basis for assessing the validity of patent rights. Many aspects are considered in such an assessment including ownership and the details of the prosecution history (commonly referred to as the file wrapper). These aspects are also factored into the other types of legal opinions outlined below.


For FTO opinions, a freedom-to-operate search report reflects the state of the art in a technical field specifically related to a given invention. The FTO opinion, produced from the patent analysis, identifies the elements of similarity and differentiation to determine the extent of a client’s freedom to operate a product or invention, clarifying the future options of the IP strategy.


An infringement opinion involves a process akin to the “reverse” of an FTO-opinion investigation. In such an engagement, instead of a search report, a client typically provides information regarding an alleged infringing product(s) which is then assessed through patent analysis in the context of the client’s enforceable IP rights, particularly the scope of the claims in the client’s patent portfolio and IP strategy.


Beyond these, other types of opinions can include trademark-infringement assessments, copyright-infringement assessments, and expert opinions. Such opinions can be extremely valuable in the case of a later legal dispute, providing protection from trebling of any claimed damages. In addition, such legal opinions can serve as strategic positioning points when drafting licensing agreements such as an EULA (end-user licensing agreement).


FlashPoint IP, a leader among intellectual property firms, endeavors in this regard to provide an enlightened perspective for its clients to move forward with business ventures with the assurance of being well-informed. FPIP strives to implement these diverse issues into a unified framework, using patent analysis in a business context. Our engagement managers are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to advance your business interests.