What is a Patent Opinion and Why Should You Get One?

What is a Patent Opinion?

A patentability opinion is a legal analysis of potential claims for a patent, generated by a qualified patent attorney.  Requesting a patentability opinion from a registered patent attorney can help an individual or company decide whether to move forward in the patent process.  Obtaining this opinion is informative and cost-effective compared to the much larger investment of diving into preparing, filing, and prosecuting a patent application without first conducting research on existing patents and publicly available patent applications.   

What Does a Patentability Opinion Cover? 

Viability

A patent attorney generates this opinion to determine and analyze the viability of the invention.  The U.S. Patent and Trademarks Office (USPTO) requires that an invention be novel, useful, and non-obvious to be eligible for a patent.  Therefore, the patentability opinion may evaluate whether the invention meets all or some of these requirements.  

Similar Patents

One of the most important functions of the patentability opinion is to examine “prior art.”  Prior art is the term used to describe evidence that your invention has already been publicly disclosed.  A patent search is performed by an experienced patent researcher and the results are reviewed in detail to form the patentability opinion.  The opinion will build upon the patent search results and examine the prior art as well as the overall strengths and weaknesses of your case for a patent based on this information.  

Potential Obstacles 

In light of any pitfalls uncovered during the analysis of prior art and viability, a well-constructed patent opinion should have recommendations regarding the next steps or alternative paths to move forward.  The opinion can serve as a roadmap for ways to draft the patent claims to overcome prior art and other obstacles during examination and prosecution. 

Estimated Costs 

Throughout this evaluation period, the patent attorney will gain not only a better understanding of any potential obstacles to obtaining a patent, but also the costs expected in prosecution.  Prosecution of a patent application is perhaps the most expensive and volatile stage.  However, while drafting the opinion, the attorney can more easily pinpoint issues that may arise at prosecution and gauge the expected costs.  Using this information can increase the likelihood of success and lower the costs of prosecution, by focusing on the more patentable elements of the invention in the initial application.   

The process of obtaining a patent is expensive and lengthy.  Although the patent opinion can give a good idea of what to expect in the process, the opinion is not a guarantee.  The return on investment of receiving patent protection for an invention can be a significant factor in weighing the benefits against the costs and risks.  The anticipated return on investment should be based on the likelihood of the commercial success of the invention.  

Key Takeaways for Obtaining a Patentability Opinion

A patent search and patent opinion will help inform you of:

• existing prior art that could be of concern;

• the potential viability of your invention;

• ways to improve the claims of a potential patent application to make it more likely to obtain a registration; and

• estimated costs for prosecuting an application

For more information on patent protection, see our Patent Services Overview and our Industry Focused Legal Solutions pages.