Opinions and Expert Insights 

O&R Patent lawyers at work.

Clients trust our nuanced and unequivocal advice on a broad range of offensive and defensive patent situations. We play a central role in matters beyond traditional patent services because we immerse ourselves in each client’s business objectives and are masters of the technology, the competitive landscape, and the prior art. Investors, acquirors, and corporate or litigation counsel bring us in to provide our expert insights into a single or family of patents in the context of a transaction or litigation. We are more than patent prosecution experts.

Patent Opinions

Delivering patent opinions, and more importantly, the expert work that goes into the evaluation and analysis of one or a group of patents, is a key component of our practice. We bring our expertise in patent law and practice, our thorough understanding of relevant technologies, and our creativity to provide significant value to our clients in this area. We provide a broad range of opinion services, from non-infringement, validity, and patentability opinions to design-around analyses.

As with our patent prosecution practice, we tailor both the process we use in analyzing a given patent or portfolio and the manner in which we deliver our findings and reasoning to best suit our clients’ needs. In some instances, an oral discussion or brief memorandum may be most appropriate, and in other cases, a full legal opinion letter is warranted.

O&R’s opinion services include:

  • Non-infringement or invalidity opinions of other parties’ patents, including conducting prior art searches for invalidating prior art if necessary

  • Infringement opinions of our clients’ patents by other parties’ activities

  • Freedom-to-Operate opinions and Clearance Studies for our clients’ current or planned activities to establish that we have not found any other party’s valid patents that would limit those activities, generally involving a patent search related to one or more aspects of that activity

  • Patentability opinions and analyses to assess the scope of protection that our client may expect to achieve if they filed a patent application, generally including a search for prior art that may limit the scope of protection that may be obtained

  • Landscape studies of patents and patent applications in a field, for example, to provide a client with a sense of the activities of competitors and often as a preliminary step before a Clearance Study or a patentability analysis

  • Design around analyses when our client is seeking to intentionally avoid another party’s patent by carefully avoiding the scope of the patent claims

We have been asked to provide opinions in a number of circumstances, including:

  • A potentially problematic patent is identified and our client asks us to determine if the patent impacts their product

  • A competitor is awarded a patent and our client wants to understand its significance

  • A venture investor or acquiror in an M&A transaction is performing due diligence on a portfolio and asks us to evaluate the strength of the portfolio

  • A client is considering licensing from a third party a patent or an entire portfolio

  • A client has been approached by a third party seeking to license a patent or portfolio

Expert Insights

We play a central role in matters beyond traditional patent services.

We analyze patent portfolios for clients preparing for transactions and major funding events, including clients for whom we have created the portfolio and clients who bring us in for a single transaction. When intellectual property is a critical asset in a business transaction, we evaluate the strength and potential vulnerabilities of the portfolio.

Clients confer with us when they want a second opinion on patent litigation strategy. We analyze the strength of an adversary’s intellectual property portfolio and past verdicts and settlements to help clients make informed decisions about their best course of action, whether they are considering bringing litigation or when facing a litigation threat. If litigation counsel is not yet involved, we have deep relationships with leading litigation firms and can help clients select the right patent litigator to serve their needs.

Investors and M&A transaction parties bring us in to assess the strengths and vulnerabilities of a patent portfolio comprising a key asset in a specific transaction. Our ability quickly to grasp even the most complex technology, the industry significance of the portfolio, and the competitive landscape means that it does not take us long to be up to speed for clients who seek our advice on a specific deal, even when we have not built the patent portfolios involved.  Given our reputation for a comprehensive and strategic approach to intellectual property that combines our industry knowledge, business acumen, operational know-­how, technical expertise, and decades of patent law experience, our advice in these situations carries weight.

We often provide counsel when transactions involve particularly complex, cutting-edge technologies that have the potential to redefine product or business categories. We can anticipate opportunities and avoid problems because our deep technical expertise enables us to project how technology is likely to develop. We have been able to suggest additional profitable applications for a client’s technology and warn of potential competitors.

Our Approach

Whether we are providing advice to a client for whom we have built a patent portfolio or are brought in to advise on a specific transaction by corporate counsel, a VC, private equity firm, underwriter, investment banker, or a party to the transaction, we are committed to the client’s success. When you bring in O&R, you can trust that we are not focused on cross-selling. We are focused on giving each client the intellectual property advice it needs to accomplish its goals.

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