About Infringement Prevention, Licensing, Management And More
Turn to Booth Albanesi Schroeder, PLLC, for the guidance you need on all aspects of patents and intellectual property (IP) protection. Our attorneys all have scientific and technological backgrounds, and are ready to advise on these and other IP issues.
Noninfringement And Invalidity Opinions
A noninfringement 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 noninfringement 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 noninfringement 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 noninfringement 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 And 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 nonpracticing entity (NPE) such as a university. Even when the owner practices the IP, there can be advantages to sharing IP with others — for example, 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 maintaining a royalty stream.
The first step toward acquiring a patent is determining whether the invention is patentable. Booth Albanesi Schroeder, PLLC, is equipped to perform thorough analyses of the USPTO, EPO and other relevant databases to determine whether your invention has already been disclosed.
After an exhaustive search, we will present a patentability report, including relevant prior art, and an opinion as to the likelihood of success in prosecuting a patent application.