Patent Infringement: The Role of Opinions of Counsel

Originally Published June 2000

John R. Wetherell Jr.

The intellectual property portfolio of a biomedical company is fundamental to its survival. Both a sword and a shield, the portfolio is essential to the growth and long-term viability of the company. Understanding the interrelationship and interdependency between patent prosecution and litigation and the regulatory areas is critical to developing a strong portfolio.

Opinions of counsel play a key role, both offensively and defensively, in guiding management. Offensively, opinions of counsel are important in determining whether a third party may be infringing the claims of a patent. Defensively, properly used opinions provide evidence that an accused infringer acted in good faith in cases where the company is accused of having willfully infringed the claims of a third-party patent.