There are many reasons that a company may wish to obtain an IP related legal opinion; the reasons are primarily for defensive, offensive and due diligence purposes.
Defensive. A company may wish to obtain a legal opinion as to whether its own product or service, or an anticipated product or service, is clear of a third party’s IP rights, or whether a third party’s alleged IP rights are valid and/or enforceable. For example a company may: have been threatened with suit by a third party, and the merits of the threat are to be evaluated; be considering entering into a new venture or introducing a new product, and it desires to evaluate the risks, if any, posed by third party IP to the venture or new product; wish to obtain a “clearance” opinion or “freedom to operate” opinion; wish to determine the strength of a third party’s IP to assist it on deciding whether to obtain a license and/or to aid in the license terms; and more.
Offensive. Similarly, a company may wish to obtain an opinion as to whether there is or has been activity by another entity that violates the company’s IP rights. An opinion may guide the company in both determining whether to take action, and how to proceed in the event it decides to take action.
Due Diligence. A company may be considering acquiring another entity, or its assets, and may wish to gain an understanding of the strength and/or weaknesses of that entity’s IP, and/or the risks associated with the acquisition, e.g., whether the entity has been threatened with infringement or misappropriation.
Steve has extensive experience in providing each type of opinion. In each case, Steve immerses himself in the technology, and, where appropriate, the terms of the deal, to assist his client in making an informed decision as to how to proceed.