Freedom-to-Operate Opinions

In many instances a freedom-to-operate (FTO) search does not turn up any non-expired patents or pending applications with claims that would impinge on the desired freedom to operate. In other instances, a potential problem is identified in the FTO search results.

When a potential threat is identified, FLYNN IP LAW may carefully review the patent’s prosecution history (the written record of negotiations between the applicant and the patent office). The prosecution history together with the cited prior art helps define the precise scope of the patent claims. Sometimes it is useful to record the thought process of FLYNN IP LAW in a formal opinion explaining why proper interpretations of the patent claims would lead to a conclusion that the proposed product or service does not infringe any of the claims. Having the precise reasoning captured in a formal opinion may be helpful later when the product or service is revised to check to see if the old reason for non-infringement still applies to the revised product or service.

Sometimes a claim slips through the patent examination process and has language that may be so broad that is reads upon the proposed product or service but also reads upon the prior art. Other times a patent claim slips through the examination process because the most relevant prior art was not considered by the patent examiner. A close look of the most relevant prior art may show that the patent claim should not have been issued as the patent claim duplicates what was in the prior art. Other times a close look reveals that the patent claim was a mere rearrangement of things already in the prior art and would have been obvious to a hypothetical person having ordinary skill in the art of designing this type of product or service. Specialized searches for relevant prior art (an invalidity search) may be commissioned to help strengthen the argument that the issued claim is invalid.

FLYNN IP LAW may be asked to memorialize in a formal opinion the reasons that the patent claim of interest is invalid based upon the prior art or some other requirement of patent law. Having a formal opinion from a patent attorney of invalidity or non-infringement will not insulate a company from damages if a judge or jury sees things differently from the patent attorney. However, good faith reliance on advice of counsel can prevent the court from adding extra penalties for willful infringement of a patent.

Once FLYNN IP LAW has found prior art that calls into question whether the patent claims are valid, one option to consider is to request that the United States Patent Office review the patent claims in light of the newly found prior art.