Last week when I participated in a Patent Bootcamp, I joined a panel of patent practitioners discussing hot topics in IP. My role on this panel was to address the problems that can come up in the process of developing and launching a new product or service. Here’s what I said.

Opinions are essential in product and service development, and when we talk about the need for a legal opinion, we’re not talking about your opinion, we’re talking about getting my opinion; or rather getting a legal opinion from a competent lawyer. The need for a legal opinion serves at least three purposes 1) the desire to avoid a lawsuit, 2) the desire to defend a lawsuit, and 3) the desire to maintain company value.

Opinions can come in a variety of flavors- Trademark Clearance Opinions, Patent Invalidity Opinions, Patent Infringement Opinions, and Freedom To Operate (FTO) Opinions, to name a few.

Trademark Clearance Opinions are useful when a company is in the process of developing new brand names and logos. The ideal time to seek a Trademark Clearance Opinion is BEFORE a company has launched a new product or service. Put another way, get the opinion BEFORE purchasing a domain, spending money on swag, and before even printing the logo on tags and letterheads. The most obvious reason for seeking the opinion before launching or investing in the brand is because you might need to change it. Although you may be in love with a name or logo, don’t love it too hard, because someone else may have used it first. It happens. It happens all the time.

Patent Invalidity Opinions are useful when a company believes there is a serious possibility of a lawsuit from a company holding a patent on similar technology. As with the Trademark Clearance Opinion, the ideal time to seek a Patent Invalidity Opinion is BEFORE a company has launched a new product. The Patent Invalidity Opinion usually opines on a number of published documents (such as patents or published papers), commercial sales, etc. which might “invalidate” the patent based upon the patent laws. This type of opinion is probably the most expensive because it involves leaving no rock unturned so to speak in finding references or activities which might invalidate the patent.

Patent Infringement Opinions are useful when a company has received a cease and desist letter, or when a company’s customer has received one. One curious aspect of supplying customers with products is that you, as the supplier, have a duty to supply non-infringing products. Sometimes a patent holder will send a cease and desist letter not to you as the manufacturer, but to your customers for selling the infringing products. If you’ve done business with a retailer or distributor, you’ve likely signed an agreement promising not to sell infringing products to them. You’ve also probably promised that if you do, you’ll reimburse the retailer’s legal expenses in the event they get dragged into a lawsuit (seriously, I’m not joking). Not cool, right? The ideal time to seek a Patent Infringement Opinion is immediately upon notice. Waiting, delaying, and stalling can cost you, and cost you big.

Last, but not least, are Freedom To Operate (FTO) Opinions. FTOs are best used in the product development process. If a company uses the Stage/Gate or milestone approach to product development, an FTO at each critical juncture in the development process can save lots of time “redesigning” or “designing around” a close competitor’s intellectual property. FTO opinions can be highly collaborative between the attorney and the product designer and can take the form of a New Product Planning Assessment.

Last Word:

Building a successful Sci-Tech company requires making good strategic choices from the very beginning. Short cuts, bad calls, and poor judgment can cost a company time and resources. When designing new products and services, sci-tech companies are well-advised to interact regularly with their technology lawyer to help develop non-infringing offerings. Since litigation tends to de-value an asset (both company and technology), a hopeful sci-tech company should work in close concert with their legal counsel to avoid the avoidable.

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Angela Grayson, CIPP/US, CLP  is an author, speaker, and lawyer. She is the Principal and Founder of Precipice IP, PLLC.  Angela is a patent, trademark, copyright, and technology law attorney with almost 20 years of experience helping science and technology companies protect products, brands, designs, and data from idea to launch.

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