Opinions

Patentablility

Unlock the potential of your innovations with Kagan Binder’s comprehensive legal services relating to patentability evaluations. Our seasoned team of professionals helps clients identify patentable inventions and strategically navigate the intricate landscape of patent rights. From harvesting inventions in research and development to aligning with business strategies, our legal services encompass a holistic approach to patenting and patent protection.

Choosing Kagan Binder for these evaluations is supported by our expertise, experience, collaborative and strategic approach, holistic perspective, and proactive guidance. We work closely with clients, fostering open communication to understand their inventions, business goals, and competitive landscape. We consider not only the legal and technical aspects, but also the broader business implications. Our goals are to help you build a patent portfolio that aligns with your strategic objections and that contributes to the long-term success of your business. Trust Kagan Binder to be your strategic partner in navigating the complexities of patentability, from inception to integration with your business.

Key components of our patentability services include:

Invention Harvesting

Collaborate with Kagan Binder to effectively harvest inventions from your research and development efforts. Our team works closely with clients to identify and capture inventive concepts that have the potential for patent protection.

Invention and Inventor Identification

We assist in the meticulous identification of inventions and inventors within and, if applicable, outside your organization.

Patentability Searches

Kagan Binder conducts thorough patentability searches to assess the landscape of existing inventions. Our comprehensive searches help determine the novelty and nonobviousness of your invention in the context of prior art. When appropriate, we also engage outside searching services to help uncover relevant prior art.

Prior art evaluation

Our professionals rigorously evaluate prior art to determine the uniqueness and nonobvious nature of your invention. This critical analysis forms a key basis for assessing patentability and guiding strategic decision-making.

Strategic planning

We go beyond the technical aspects of patentability, integrating our evaluations with strategic business plans and competitive landscapes. Kagan Binder provides strategic guidance on how patents can be leveraged to enhance market position, foster innovation, and establish a competitive edge.

Agreement strategies

Whether you are entering into licensing agreements, partnerships, or collaborations, our team considers the implications of patentability on your agreement strategies. We provide insights into how patents can be strategically used to protect your interests and drive business value.

Validity

Navigating the competitive landscape requires a keen understanding of patent validity. Kagan Binder helps clients evaluate the strength of competitive patents and whether competitive patent rights are invalid.   Our objective is clear: to determine if competitive patent rights are vulnerable, ensuring they do not pose unwarranted barriers to your market entry or established market position.

Choosing Kagan Binder for these evaluations is supported by our legal, business and technical expertise, our comprehensive approach, our strategic insight, and our client-centric focus.  Our team is well-versed in patent laws and possesses the knowledge necessary to assess validity with precision.  

Key aspects of our validity evaluations include the following services:

Validity searches

Kagan Binder assists clients in conducting thorough validity searches to uncover potential weaknesses in competitive patent rights. Our comprehensive searches delve into relevant prior art, evaluating the landscape to identify potential vulnerabilities.  This includes searching the patent and technical literature as well as investigating prior public uses, sales, or other disclosures.  

Appropriate subject matter properly described

Section 101 of the patent laws define subject matter that is eligible for patenting.  Section 112 of the patent laws defines requirements for properly describing an invention and supporting patent claims in a patent.   Key Section 112 requirements include enablement and written description.  Claims that are patent ineligible or improperly described are invalid. Divided infringement is another doctrine that impacts claim scope.  Freedom to operate (i.e., noninfringement) in many circumstances can be established when claims have a divided infringement problem.   Kagan Binder provides comprehensive analysis under Sections 101 and 112 of the patent laws to determine whether competitive patent rights are invalid for failing to meet the requirements not only for patent eligibility and substantive adequacy but also whether the claims suffer from a divided infringement problem. 

Novelty and Nonobviousness assessment

Novelty and Nonobviousness (inventive step):  In all territories of the world, patent claims must define an invention that is novel and that is nonobvious (referred to as inventive step outside the U.S.).   Our team conducts in-depth evaluations of prior art and measures this against claim scope to determine if the competitive claims are invalid as failing fail to possess novelty and inventive step. This often involves not only scrutinizing existing patents, publications, and other relevant sources to identify potential shortcomings but also a thorough study of the patent at issue, its prosecution history, and prosecutions of family counterparts.

Strategic guidance

Our validity evaluations go beyond identifying weaknesses. They provide strategic guidance for market entry. Kagan Binder helps clients understand the competitive landscape in view of an invalidity analysis, offering insights into how to navigate potential obstacles and capitalize on opportunities.

Clear and actionable recommendations

We understand the importance of clarity in decision-making. Kagan Binder delivers clear and actionable recommendations based on our validity evaluations, empowering clients to make informed choices that align with their business objectives.

Freedom to Operate/Non-Infringement

Understanding the landscape of intellectual property rights is crucial to ensure the freedom to operate (FTO) in your chosen market.  In technology-driven markets, avoiding infringement is a key aspect to sustained market presence and business success.  Infringing competitive patent rights is a significant problem that can block entry into a market or require exiting a market at great cost and loss.  In some circumstances, you might uncover relevant third party rights from your own investigation.  Other times, the owner of relevant rights threatens you with infringement.   Infringement risks can arise early such as during research and development before commercial entry.  Infringement risks also can arise after commercial entry, sometimes long after commercial entry.  In any of these scenarios, Kagan Binder can evaluate if the third party intellectual property rights are a problem or not.   If there is a problem, Kagan Binder offers numerous corrective strategies to help you find a path that avoids infringement.

Choosing Kagan Binder for these evaluations is supported by our expertise, experience, strategic approach, client-centric focus, and integration of legal, business, and technical savvy.  Our team possesses a deep understanding of intellectual property laws, allowing us to provide nuanced and insightful evaluations of freedom to operate and noninfringement. We offer strategic counseling tailored to the specific needs of your business. Whether you're in research and development or facing threats of infringement, Kagan Binder provides guidance that aligns with your overall business objectives and that allows you to confidently navigate the complexities of avoiding infringement.    Your success is our priority.  

Key aspects of our legal services relating to freedom to operate/noninfringement include the following

Early risk mitigation

Infringement risks can arise in the research and development phase prior to market entry.  Our strategic counseling during this crucial period aims to guide research and development toward market entry strategies that minimize the risk of infringement. 

Mature risk mitigation

Infringement risks can arise after market entry.   If this happens, our strategic counseling can guide you toward corrective strategies that minimize the risk of infringement and allow you to stay in the market.

Claim construction and noninfringement evaluation

Generally, to assess infringement the claim scope of the patent at issue must be construed as a first matter.  This often involves a thorough study and evaluation of the patent at issue, its prosecution history, related prosecution histories, and the prior art.  Once the claim scope is understood, the analysis then evaluates if any claims cover the composition, product, machine, or process at issue either literally or under the doctrine of equivalents.  Kagan Binder professionals have the expertise and experience to allow us to provide thorough, insightful evaluations of freedom to operate and noninfringement. 

Corrective strategies

Kagan Binder does not just identify problems.  If infringement risks are identified, Kagan Binder provides strategic guidance on potential paths forward We provide holistic solutions. Our goal is to empower clients with options, whether through risk mitigation, design around strategies, licensing agreements, validity challenges, or other business solutions. 

Product Clearance & Design Around Services

During research and development or otherwise before commercial entry or after commercial entry, Kagan Binder can help you uncover and evaluate third party patent rights that might be problematic as an infringement risk.  If the third party patent rights are problematic, Kagan Binder can help guide design around efforts so the rights can be avoided.

Validity Challenges

For clients seeking a more assertive approach, Kagan Binder can help attack the validity of asserted patent rights. This may involve actions such as inter partes review in the United States Patent and Trademark Office or opposition proceedings before international patent offices.

License agreement expertise

Kagan Binder has extensive experience in negotiating licensing agreements. If a license agreement is a desired solution to mitigate risks or respond to infringement threats, our team can guide you through the drafting and negotiation process to place an agreement that allows you to do business.

Agreement Scope/Analysis

In the dynamic landscape of intellectual property agreements, understanding your rights, obligations, and risks is paramount.   At Kagan Binder, we have the expertise and experience to provide strategic insights, evaluations, and recommendations tailored to help you navigate the complexities of intellectual property agreements.

Choosing Kagan Binder for these evaluations is supported by our expertise, experience, strategic approach, client-centric focus, and integration of legal, business, and technical savvy.  We understand the strategic nuances of intellectual property agreements.  Whether you need to comply with obligations, defend against allegations, or enforce your rights, our approach is strategic and tailored to your unique circumstances.

Key aspects of our legal opinion services relating to intellectual property agreements include the following legal services:

Compliance Evaluation

We offer in-depth analyses to ensure your compliance with the terms and conditions in your intellectual property agreements.  Our team assesses the scope of your rights and obligations and provides clear recommendations for adherence.

Defense Against Breach Allegations

If you face allegations of breach, we offer legal services to evaluate your risk and, if needed, provide a defensive strategy.  We carefully examine the terms of the agreement, assess your actions, and recommend courses of action to safeguard your interests.

Breach by the other Party(ies)

Kagan Binder can help you evaluate if the other party(ies) are breaching their obligations or acting beyond their authorizations in applicable intellectual property agreements.   Our thorough analysis includes scrutinizing the actions of the other party(ies), identifying potential breaches, and developing effective engagement or enforcement strategies.