It can be very advantageous for a potential defendant to obtain an opinion of non-infringement or invalidity before the plaintiff files a lawsuit.
The value of a pre-suit opinion has diminished slightly with recent case law that removed the presumption that the failure to obtain a pre-suit opinion indicated that infringement was willful. However, a pre-suit opinion of non-infringement by a competent patent attorney can be the basis for a finding that infringement was not willful, which can defeat a claim for enhanced damages.
Another advantage to obtaining a pre-suit opinion is that your attorney will have more time to fully develop his or her defense should you be sued.
Special Issues for Defendants: Non-Infringement Opinions
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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