Mind + Muscle

technical minds + legal muscle



Opinions & Strategic IP Advice

As IP lawyers dedicated to science, we understand your technology and have significant experience in patent law. But we also understand the market forces at work in your industry:

  • Where is the demand?
  • Where are the checkpoints in your competitors' technologies? 

  • Which patents to renew, which to sell, and which to license? 

We provide strategic counseling services to address these very questions. We counsel in such areas as;

  • Intellectual property portfolio strategies – developing global protection strategies that help maximize asset value

  • Intellectual property valuation – working with merger candidates to value a target company’s IP assets and liabilities

  • Intellectual property audits

  • Venture capital – working with venture capital groups to protect their investment and to enhance the asset base of the venture

  • Intellectual property due diligence

Opinions of Counsel

Opinions of counsel are an important tool given that the ability to exclude others and freedom to operate are fundamental to the survival of an innovator company. Both a sword and a shield, your intellectual property portfolio is essential to the growth and long-term viability of your company. Understanding the interrelationship and interdependency between patent prosecution and litigation is central to developing a strong portfolio.

Opinions of counsel play a significant role in informing and guiding your management team. Offensively, they are important in determining whether a third party may be infringing the claims of one of your patents. Defensively, opinions can be used to determine whether you, if accused of infringing a third party's intellectual property rights, can continue business activities without being accused of willful infringement.

Our role as trusted adviser is to provide you with our opinion regarding intellectual property issues that affect your business, and, when called upon to do so, act on and defend those opinions in litigation.

We render opinions regarding freedom-to-operate, non-infringement, invalidity, patentability, registerability of trademarks, and enforceability of patents and trademarks. Opinions range from formal opinions of counsel, upon which clients have successfully relied at trial, to less formal letter opinions, all of which provide strategic advice to assist you in making critical business decisions.

Opinions must be competent and reasonable to withstand the scrutiny of a court and provide the foundation on which you can rely in decision-making. To render such opinions, we employ our understanding of both the law and technology and our experience before the U.S. Patent and Trademark Office. We review newly-issued court opinions to provide advice based on the most pertinent case law. We have a keen understanding of the broad range of intellectual property issues involved in rendering opinions due to our many years of experience prosecuting patents and trademarks before the U.S. Patent and Trademark Office. Our collective experience in patent prosecution allows us to conduct a thorough analysis of a patent file history in order to assess the scope of a patent. And, we turn to the depth of our technical training to reveal the nuances that can make an important difference in the outcome of a case.

(1) Success Stories

  • Phillips Foods

    From local sensation to global competitor

    When Phillips Foods developed a less expensive alternative to a jumbo lump of crab meat, Sterne Kessler was immediately called to protect its process and product as valuable assets. We searched and reviewed the closest prior art to craft the broadest possible patent protection for the method of manufacturing a formed lump of crab meat. 

  • Method

    Protecting Innovation for Method Products

    Method home cleaning products turned to Sterne Kessler for an IP strategy to protect the innovative packaging of their products. Such unique products, however, warranted a correspondingly creative approach to IP protection. We determined that certain bottles are best suited for patent protection, while others are better adapted to copyright protection.


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