BarbriSFCourseDetails

Course Details

This CLE course will guide patent counsel in preparing freedom to operate (FTO) opinions for companies developing new products. The panel will outline best practices for drafting FTO opinions to potentially avoid or reduce infringement risks and to reduce potential damages awards.

Faculty

Description

Patent FTO searching and analysis is a critical component in developing a new product or process. Counsel should instruct inventors on how to document information for sound decisions regarding whether they have the FTO in a particular technology area.

The Federal Circuit has emphasized the continuing relevance and importance of FTO opinions for avoiding enhanced damages in post-Halo cases. The Supreme Court also underscored the importance of non-infringement opinions as a defense to active inducement of infringement in its decision in Commil USA v. Cisco Sys.

Companies should work with counsel to develop an FTO opinion before proceeding too far with research, development, and commercialization of a product or service to better understand the potential risk of infringing another's patent rights. Further, counsel should also consider how potential post-grant validity challenges could be used in parallel with an FTO analysis, because an invalid patent cannot be infringed.

Listen as our authoritative panel of patent attorneys discusses best practices when drafting FTO opinions for companies planning to develop new products. The panel will discuss the impact of post-grant challenges and strategies for employing FTO opinions.

Outline

  1. Legal framework for willful and induced patent infringement and advice of counsel defenses
    1. Statutes and major cases
    2. Privilege and waiver
  2. Comparison of different FTO strategies and actions and international considerations
  3. Considerations for drafting and developing FTO opinions
  4. Post-grant proceedings and FTO

Benefits

The panel will review these and other crucial issues:

  • What legal framework is used to assess a party's intent for willfulness/enhanced damages and inducement of infringement, and what aspects are still unsettled?
  • What are best practices for patent counsel when analyzing FTO issues and structuring FTO opinions?
  • When should counsel seek FTO opinions to analyze new research and products in light of potential infringement claims?
  • What is the impact of the post-grant process on FTO opinions?