Different questions, different analyses
A patentability analysis asks whether your invention appears new and non-obvious against what has been published. A freedom-to-operate analysis asks something else: whether a product you plan to sell may fall within the claims of patents still in force that belong to others. An infringement analysis compares one product with specific claims, and an invalidity analysis looks for earlier art that may undermine a patent. These are distinct pieces of work with different scopes and costs, and a search done for one purpose often does not answer another.
What makes an analysis useful
The value of the work depends on how well the product or invention is described to the person doing it. Technical documentation, design files, and an accurate account of how the product functions in the field lead to sharper conclusions than marketing materials do. Results also depend on the markets in question, because patent rights are national and a clear landscape in one country says little about another. Any analysis is a snapshot, since new patents issue and pending applications change, so a freedom-to-operate review may need updating as the product evolves.
Opinions of counsel and privilege
A formal written opinion of counsel on infringement or validity can matter later if a patent owner claims the infringement was willful. U.S. patent law provides that failing to obtain such an opinion cannot be used to prove willful infringement, which makes the decision whether to get one a strategic choice rather than a requirement. Because analyses can be discoverable in litigation depending on how they are prepared and shared, we discuss at the outset who will receive the work and how it is documented. We also agree on which claims, which products, and which jurisdictions are in scope.
