Freedom to Operate Opinions, or non-infringement opinions, are written analyses of whether a particular device or activity infringes a patent. They are generally requested with respect to a particular patent, rather than a field of patents as a whole. These opinions require a great deal of work and consideration, are comprehensive and typically used for business guidance and decisions, and are consequently not inexpensive.
A freedom to operate opinion may be necessary if a company is worried that its practices may infringe the patent rights of a patent owner. The opinion looks at the patent and compares it to the device or activity of the company. The ownership of the patent is first determined: whether the patent has been assigned, to whom, and whether the patent has been maintained and can still be enforced by that owner.
Once ownership has been considered, the potentially infringing activity or device is compared to the claims of the patent. This involves analyzing the different claims and their scopes and breadths and construing them in light of the drawings and the written description. The analysis can proceed further with an investigation into the file wrapper or history of the patent application. Amendments made during prosecution can potentially limit the claims in a way that would except the potential infringement. If need be, prior art searches can be performed to see if there was relevant art that should have been disclosed. Lastly, if infringement is possible, the analysis may consider whether there are any applicable defenses.
Freedom to Operate Opinions are like insurance policies for businesses. They provide a careful and considered evaluation of the subject patent and compare the questioned activity. An opinion of non-infringement can be helpful in deciding whether to proceed with the use or sale of a process or device and can show that infringement, if later found, was not intentional, thus lowering the risk of exposure to enhanced damages. Only a patent attorney should provide a Freedom to Operate Opinion. If you have any questions about these analyses or the information, please contact Tom Galvani or call him at 602-281-6481.