Understanding the risk associated with a patent requires an ability to carefully dissect the history of the patent and the scope of its claims. Booth Albanesi Schroeder attorneys are experts at counseling clients on whether a product potentially infringes upon another patent and on issues concerning the patent’s validity. BAS can provide right-to-use opinions in advance of product investment, infringement and validity due to diligence in advance of litigation, and infringement and validity analysis in response to cease and desist letters and threatened or actual litigation. BAS patent lawyers can also assist clients in developing, marketing, and enforcing patent portfolios.
Portfolio Strategy and Counseling
Of the various types of intellectual property, patents provide the engine that most often drives mergers, acquisitions, and initial public offerings. Copyrights, trademarks and trade secrets are certainly important intellectual property assets, but it is the patent's power to exclude competitors from selling products or providing services that elevates the value of a patent.
But not all patents are created equal. Some are worthlessly narrow and easy to "design around." Others provide a significant barrier to entry by a competitor. However, the value of a patent cannot usually be determined by simply examining the patent. Instead, the value of a patent is uncovered by scouring its history, analyzing other patents, examining the competitive landscape and considering potential alternatives to the patented invention. As a result, patents require the most intensive scrutiny of all intellectual property.
Due diligence requires a detailed understanding of the patent document and its prosecution history. This prosecution history consists of the paper trail created by the patent application during the application process. Patent attorneys typically ask questions like: Does the patent owner really own the patent? Is there some technical defect in the patent? Is the patent valid? But to truly understand the value of a patent, a patent attorney must understand the context of what the acquiring company hopes to achieve as a result of the transaction. The patent attorneys at Booth Albanesi Schroeder are experts at assisting companies identify their objectives and assessing the true value of an acquisition’s patent portfolio.
NON-INFRINGEMENT & INVALIDITY OPINIONS
A non-infringement opinion distinguishes a product or service from close patent claims. Prior to entering a market, or sometimes after, you may learn that a competitor has a patent portfolio that appears to pose a threat. In performing a non-infringement analysis, the patent is analyzed and its scope is determined, and then compared to the product or service that you wish to market. In some instances, a non-infringement opinion serves to avoid known problems, for example, to validate that the product has been properly designed to avoid a problematic patent. Alternatively, a thorough analysis may conclude that the patent is invalid and therefore could not be infringed. A non-infringement or invalidity opinion may also be used to help show good faith reliance on advice of counsel in defending against a charge of willful infringement.
Licensing & Transfer Transactions
An intellectual property owner may want to transfer some or all of its IP but an outright sale is not an attractive option. For example, the owner may be a non-practicing entity (NPE) such as a university. Even when the owner practices the IP, there can be advantages to sharing IP with others, e.g., as part of a settlement of litigation or a cross-license that may resolve a stalemate where two or more parties may have mutually blocking IP.
Licensing, as opposed to complete transfer or assignment of IP, provides the owner with several advantages such as retaining title and share in any upside from the licensee’s sales and maintain a royalty stream.
The first step towards acquiring a patent is determining whether the invention is patentable. Booth Albanesi Schroeder performs a thorough analyses of the USPTO, EPO and other relevant databases to determine whether your invention has already been disclosed.
After an exhaustive search, a patentability report, including relevant prior art, and an opinion as to the likelihood of success in prosecuting a patent application is presented.
Portfolio Management & Review
A business strategy without an IP strategy is no strategy. An IP portfolio can be a significant part of a corporation’s overall value. For a patent portfolio to be a truly successful, effective, and winning portfolio, a company must also strategically manage it to return profits and direct market trends. Careful and selective IP application filings based on a thorough business-focused IP strategy, coupled with periodic portfolio reviews to determine international filing and maintenance decisions, are essential to ensure that a company’s IP portfolio is focused on commercially-significant developments, and to maximize return from that IP investment. The attorneys at Booth Albanesi Schroeder have extensive experience managing IP portfolios for a variety of entities, from emerging growth to Fortune 100 companies.
Freedom to Operate Opinions
Prior to entering a market, many companies recognize the benefits of a product clearance, also called “freedom to operate” (FTO) or "right to use" opinions.
FTO analysis involves identifying and analyzing the patents of others that may subject your company to patent-infringement liability. By performing FTO analysis before developing and launching a new product or before acquiring a new company, your company can limit the risk of future litigation and avoid unnecessary expense. FTO analysis done early in the cycle of product development affords companies the opportunity either to modify the design and avoid infringement before reaching the point of no return, or to take a license.
As a side benefit, FTO studies can identify opportunities for patenting or further development. Similarly, performing FTO analysis as part of due diligence may allow you to steer clear of an opportunity fraught with the danger of litigation.