At the beginning of the patent process, many of the hurdles inventors face are those of due diligence: ensuring that their invention is unique and patentable.

Part of this process involves patent opinions, which are legal forms of feedback that provide inventors insight into how likely it is that their invention will be able to receive a patent from the United States Patent and Trademark Office (USPTO).

There are various types of patent opinions, but the most common types are the:

  • Patentability opinion
  • Right-to-use opinion
  • Non-infringement opinion
  • Validity opinion

Each patent opinion serves a unique purpose. As an inventor, you may need to use one or more of these to ensure the commercial or legal success of your invention or your business potential.

Patentability Opinion

These are the most general types of opinions, and they exist to answer the question: is my invention eligible for patent protection? The patentability opinion often goes hand-in-hand with a patent search, because a significant part of patentability is based on prior patents.

A patentability opinion therefore searches prior art to find patents and inventions that are similar or that may present legal complexities.

The patentability opinion also takes a broader look at the invention to determine if it meets the USPTO’s requirements for a patent, which include being useful and nonobvious. This opinion, therefore, offers the inventor the most high-level overview of his or her invention.

This also allows the inventor to better evaluate the potential viability of the invention. Applying for a patent takes significant time and money is generally worthwhile only if there are clear indications that the invention is eligible for a patent.

Right-to-use Opinion

The right-to-use opinion looks specifically for other patents that the inventor’s product may infringe upon. This opinion is later down the invention pipeline, and essentially gives the inventor clearance to pursue production.

This opinion will identify any patents that are similar enough to bring up potential infringement issues, and will also include legal solutions to work around these infringement possibilities. This opinion can help inventors determine whether or not to continue with the invention.

Non-infringement Opinion

While the right-to-use opinion focuses on infringement issues in general, the non-infringement opinion looks at specific patents and inventions to determine exact infringement issues.

If, for example, one software provider found another software product that was very similar to its own, it could pursue a non-infringement opinion that would give the inventors an idea of which areas of the software were more likely to infringe on the existing patents.

This is different than the right-to-use opinion because it pinpoints specific claims rather than the invention on the whole. This way, the inventor can have a breakdown of the features, functions or characteristics that must be altered in order to receive patent protection.

This is often used for competing inventors or companies that have very similar products but want to avoid infringement conflicts.

Validity Opinion

A validity opinion acts to verify the validity and enforceable nature of a patent. This can be helpful for those who are purchasing patents or rights to patents, as well as for inventors who want to ensure that active patents are valid.

Like the other opinions, the validity opinion is a way to minimize the risk of infringement issues in the future. If an existing patent is found to be invalid or otherwise unenforceable, this may open up new patent possibilities for the inventor.

Getting Help with Patent Opinions

Because patents are such a significant intellectual property investment, performing due diligence at the beginning of the process can save time, money and headaches in the future.

Patent opinions are an important part of the diligence process, and can provide you with a certain amount of legal assurance before pursuing an invention.

To learn more about patent opinions, contact the intellectual property team at JacksonWhite today. Our team can help you preserve and protect your most valuable assets.


Call JacksonWhite at (480) 464-1111 to discuss your Intellectual Property case today.

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