Why Companies Still Ask for Patent Opinions
After a warning letter, competitor patent discovery, or FTO escalation, management often needs more than a search result. It needs a documented position: why the product does or does not infringe, whether the patent appears vulnerable, what assumptions the conclusion depends on, and what the company should do next.
A formal non-infringement or invalidity opinion can serve that purpose. It can organize technical facts, legal analysis, and decision-making. It may also become relevant evidence of what the company understood and relied on if willfulness is later litigated. But its role has changed substantially from the way many practitioners described opinions two decades ago.
The Seagate Era: A Rigid Objective Gate
In 2007, the Federal Circuit’s en banc decision in In re Seagate Technology, LLC adopted a two-part framework for enhanced damages. The patentee first had to show objective recklessness; only then did the inquiry move to the accused infringer’s subjective knowledge.
That objective threshold made strong non-infringement or invalidity positions particularly important. If an accused infringer had an objectively reasonable defense, the first part of the test could block enhanced damages even if the defendant’s subjective conduct looked troubling.
Halo Removed the Rigid Objective Prerequisite
In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Supreme Court held that the Seagate framework was too rigid and impermissibly constrained the discretion Congress gave district courts under 35 U.S.C. §284.
Halo did not make enhanced damages routine. The Court described them as a punitive sanction generally reserved for egregious cases of culpable behavior—conduct characterized in the cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, or similarly blameworthy. It also emphasized that the relevant culpability is assessed in light of what the actor knew at the time of the challenged conduct, rather than only defenses developed later in litigation.
A thoughtful opinion may support a good-faith business decision. But no opinion automatically prevents a finding of willfulness or enhanced damages, and a weak opinion obtained only to create paper may carry little practical value.
Section 298 Changes the “You Must Get an Opinion” Narrative
Congress also addressed advice of counsel directly. Under 35 U.S.C. §298, an accused infringer’s failure to obtain advice of counsel—or failure to present that advice to the court or jury—may not be used to prove willful infringement or intent to induce infringement.
That provision is important for corporate policy. There is no statutory rule that every identified patent must automatically trigger a formal opinion letter. The decision should reflect the significance of the patent, the product, the strength of the apparent risk, the expected commercial exposure, and whether the company needs a formal legal position for management, financing, transaction, insurance, licensing, or litigation purposes.
What a Good Opinion Can Still Do
Even without a legal duty to obtain one, a well-prepared opinion can add value in several ways:
- force the company to identify the exact product version and facts being analyzed;
- separate literal infringement, equivalents, validity, and enforceability issues;
- document the legal basis on which management made a commercial decision;
- identify design-around, licensing, monitoring, or additional investigation steps; and
- provide contemporaneous evidence of the company’s understanding if its state of mind later becomes disputed.
The opinion is strongest when the client actually provides complete facts and follows the analysis. A conclusion based on an inaccurate product description—or ignored by the business after delivery—does not create the same record.
The Privilege Tradeoff Must Be Planned Before Litigation
Opinion work is usually undertaken within attorney-client and work-product protections. But if a party later affirmatively relies on advice of counsel as part of its defense, privilege waiver issues can arise. Federal Circuit decisions such as In re EchoStar Communications Corp. illustrate that reliance on advice can open discovery into relevant communications concerning the advice, while not giving an opponent unlimited access to every uncommunicated litigation thought.
The exact scope of waiver is fact-specific. That is why a company should not decide casually, after litigation has begun, to “use the opinion” without coordinating with litigation counsel. The opinion strategy, document handling, recipients, and later reliance position should be considered together.
FTO Report and Formal Opinion Are Related but Not Identical
An internal FTO analysis may identify patents, map claims, and rank product risks. A formal opinion of counsel may take a particular patent and product configuration further, applying legal analysis to support a more definite non-infringement or invalidity position. The labels alone do not control; scope, authorship, factual record, legal analysis, and intended use matter more.
For companies entering the U.S. market, a useful escalation model is often better than “opinion for everything”: screen broadly, identify material patents, deepen claim and validity analysis, and obtain formal counsel opinions where the business consequence justifies them.
The Practical Takeaway
After Halo and §298, the value of a patent opinion is not that it checks a mandatory box. Its value is that it can convert a known patent concern into a disciplined, contemporaneous, legally informed decision record. That is useful for risk management—and potentially useful in litigation—but it is not a guaranteed safe harbor.