A patent opinion is a document that provides an assessment of the likelihood that a given invention can be patented by a patent attorney or agent. It can provide insight into whether it is worth pursuing a patent for your invention and give entrepreneurs the assurance they need to move forward with their ideas.
What is a patent opinion?
As an entrepreneur, you may have heard the term “patent opinion” or "patentability opinion" before or about the benefits of obtaining one. A patent opinion is a written legal analysis regarding patents generally made by a patent attorney and is typically based on legal analysis and a prior art search. In most cases, a patent opinion is used as an umbrella term to describe four patent opinions: patentability opinion, freedom to operate opinions, validity opinions, and infringement opinions. For the purposes of this article, we are focusing solely on patentability opinions.
Do I Need a Patent Opinion Before I File a Patent Application?
In short, you don’t formally need a patentability opinion. It is optional and up to you if you want to obtain one. A good attorney will tell you early on at a high level whether or not they believe you should patent your invention. A patentability search and opinion is generally regarded as useful and can help you manage your businesses' risk but not needed before filing a patent application.
The purpose of a patentability opinion is to help you determine if filing and prosecuting a patent application is worth your time, resources, and money. The patent prosecution process for your invention can be costly (tens of thousands of dollars!) and the chances of obtaining a patent can be slim. A patent attorney provides important legal perspectives and opinions that assist in your decision-making. It can also highlight potential risks from third party infringement so that proactive steps can be taken towards protecting patents fully and accurately.
What Constitutes a "Good" Patent Opinion?
A good patent opinion should include four key components: 1) analysis of prior art, 2) claim construction, 3) analysis of patentable subject matter and 4) infringement risk analysis.
In the analysis of prior art, the patent attorney will assess any similar inventions that are already on the market. This includes searching through existing patents and publications to determine if there are any potential issues with an invention being considered for a patent. In addition, non-patent references patent (e.g., scientific articles, journals, etc.) should be included in the search.
Claim construction involves breaking down each element of an invention into its component parts and then determining how those parts interact with one another in order to achieve the desired result. This allows for more precise wording when drafting the claims portion of a patent application. It also ensures that any potential infringements are addressed early on in order to avoid costly litigation later on down the line.
The third component is analyzing whether or not an invention meets all criteria for being patented under US law (i.e., non-obviousness, utility).
Infringement risk analysis looks at any potential issues with third parties infringing on your rights once your invention has been patented.
Note, however, that even good patentability searches may not be perfect, and the best prior art may not be discovered in the search. For example, patent applications under US law are not publicly published until eighteen months after which they are filed. But, if it was filed prior to your application then it can be considered prior art and even be used against you. Even so, most patent opinions reveal the discovery of relevant prior art that greatly helps in the patent application process.
How much does a patentability opinion cost?
A basic patentability search for an invention with a single point of novelty will generally cost upward of $2000.
Could I do the prior art search myself?
Yes, you can do your own patent searching. You can use the US Patent Office website or Google Patents to conduct a patentable search. The search and analysis can be tricky, especially in trying to find certain patentable aspects for your invention among similar prior art.
How reliable is a patentability search?
While in most cases a patentability search and opinion will be accurate in its analysis, there is not guaranteed certainty that the best prior art will be identified in the search. Patentability searches may not be 100% perfect, but they are very useful for determining whether an invention is not patentable rather than if an invention is patentable.
Will a patentability opinion allow me to legally make and sell my invention?
No. If you need to evaluate whether or not you can make, sell, or use your invention without the risk of infringing someone else’s rights, you should obtain a freedom to operate (FTO) search and opinion, even if your invention is patentable.