Patent Opinion Services

Because the patent prosecution process, and especially patent litigation, can be expensive and protracted, it is very often beneficial to conduct a evaluation of your invention, existing prior art, and your issued patent(s) prior to filing an application, marketing your invention, or deciding to enforce your patent rights. Further, acquiring an opinion as to the patentability and validity of patent-related interests can help defeat claims of willfulness should infringement allegations later arise.

Patentability Analysis

A patentability opinion involves evaluating your invention in light of the requirements for patentability outlined in 35 U.S.C. §§ 101-103.

Section 101

Section 101 generally defines what comprises patent subject matter: processes, machines, manufactures, or compositions of matter, or any new and useful improvement thereof.  As a rule, abstract opinions and natural laws are not patentable (or themselves protectable under any form of IP protection), even if implemented using computerized methods.

Section 102

Section 102 serves to qualify an invention as “new,” most pertinently by assuring that: (i) the invention was not patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the invention’s effective filing date; or (ii) the invention was not described in another inventor’s issued patent or published patent application either of which has an earlier effective filing date. The one-year-before-filing disclosure “grace period” that existed prior to the advent of the American Invents Act has been supplanted by general exclusions to what would otherwise be prior art disclosures: the inventor’s disclosures and disclosures from others after the inventor’s own disclosures, all within the year preceding the invention’s effective filing date. Analysis of prior art under Section 102 thus generally looks to see if there are other patents, published applications, or existing products or inventions – on a global basis – which individually either disclose, teach, or accomplish the result of your Invention.  If any element of your Invention is not present in any one prior art reference, that reference will not bar patentability of your Invention under Section 102.

Section 103

Unlike novelty analysis under Section 102, obviousness analysis under Section 103 seeks to ascertain where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.”  If a claim sought to be patented “extends to what is obvious, it is invalid under Section 103” and that “[o]ne of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.”

Infringement Analysis

Infringement Analysis typically involves: (i) comparing a patent owner’s patents against potentially infringing products in contemplation of a dispute; or (ii) comparing a seller’s product against one or more patents to determine whether there is an appreciable risk of infringement.

Patent Infringement Generally

Patent infringement occurs when one, without authorization, makes, uses, sells, offers to sell, or imports into the United States a patented invention during the term of that invention’s protection. Liability for patent infringement applies to direct infringers and can also extend to those who actively induce others to commit patent infringement. Furthermore, infringers do not have to infringe the entirety of a patent to be found liable; so long as they are found to infringe a material part of an enforceably-patented invention, they may be found liable.


The claims of a patent are what define a patent’s protected subject matter. For a design patent, the claims are the drawings themselves.  The test for design patent infringement is simply whether, in the eye of an ordinary observer, giving the attention a purchaser usually gives, the accused design and patented designs are substantially the same.  The resemblance between the accused and patented designs must be such as to deceive the ordinary observer and induce him to purchase one supposing it to be the other.  Depending on the jurisdiction in which the lawsuit is brought, the test may be supplemented with the “point of novelty” test that requires, for infringement to be found, that the accused design include the particular features that distinguished the patented design over the prior art.

The claims of a utility patent are sequentially numbered sentence-like phrases which appear at the end of an issued patent.  Terminology in a utility patent claim is given ordinary meaning unless the inventor has expressly or implicitly used the term in a manner that is inconsistent with its ordinary meaning in either the specification (another part of the patent) or the throughout the patent application’s prosecution.  Extrinsic evidence, such as technical treatises, dictionaries, and even expert testimony, may be used to construe the claims’ terminology only if the patent’s specification, prosecution history, and the prior art fails to resolve the ambiguity.

Infringement Tests

To be found literally infringing a utility patent, the accused product must include each and every element of a claim following the transitional phrase (i.e., it “reads on”).  Thus, if one or more of the structural or functional limitations of the claim are not present in the accused invention, there is no literal infringement.  Even if a claim does not literally “read on,” however, an accused invention may still be infringing under Doctrine of Equivalents which looks at whether the differences between the accused and patented inventions are insubstantial.  Differences are insubstantial where the compared elements perform substantially the same function, in substantially the same way, to achieve substantially the same result.  Evidence of interchangeability, copying, and designing around claims is considered under the Doctrine of Equivalents.

Occasionally, an element in a utility patent claim is expressed as a “means” or a step for performing a specified function (i.e., “means-plus-function”). In this case, the element will be construed to cover the corresponding structure, materials, or acts described in the patent’s specification, and equivalents thereof, so long as the alleged “means-plus-function” claim element does not recite a definite structure, material, or act which in the claim.  To literally infringe a “means-plus-function” claim, an accused invention must perform the identical function specified in the claim element by virtue of a corresponding structure, material, or act that is disclosed in the patent’s specification for performing that function, or an equivalent of that corresponding structure.  A structure, material, or act disclosed in the specification is deemed to be a “corresponding structure” only if the specification clearly links or associates that structure to the function recited in the claim.

The standard for determining whether such literal equivalence exists in a means-plus-function limitation is whether the differences between the pertinent structures disclosed in the specification and the structure of the accused device are, again, insubstantial. An insubstantial change is one that adds nothing of significance to the structure, materials or acts disclosed in the specification.

Infringement Penalties

Those who are found liable for patent infringement can be held accountable for their profits or a retroactively-applied “reasonable royalty” for their infringing activity.  Where an infringer is found to have willfully infringed, the court may increase the damages award upon to three times. Courts may also award attorneys’ fees in exceptional cases and issue injunctions either stopping the allegedly infringing activities while a lawsuit goes on or after the lawsuit to permanently cease the infringer’s judicially-determined infringing activity.

Validity Analysis

A validity (or invalidity) analysis is retroactive analysis of whether an issued patent may not be enforceable despite being issued.  This invalidity may be based on Section 101-103 issues or, after reviewing the patent prosecution’s file wrapper, the patent applicant’s misconduct before the USPTO.  Naturally, the analysis can be useful when being threatened with litigation by another party or when contemplating bringing litigation against another party.