What is the difference between an intellectual property investigation report, an expert opinion, and a written opinion? Explaining appropriate intellectual property risk management measures

In the previous article, we explained the importance of conducting an intellectual property investigation before starting a business to reduce the risk of copyright infringement.

If we conduct an investigation, we will create an investigation report summarizing the results. However, in the world of intellectual property, there are also documents such as certificates and written opinions. Each of these documents has a different use and purpose, and it is important to use them appropriately.

In this article, we will explain the differences between each in detail and introduce in which situations they should be used.

1. What is an investigation report?

Investigation report is a summary of the results of an investigation into rights related to patents, designs, trademarks, etc. It is mainly used to check whether your products or services infringe on the intellectual property rights of other companies.

✅ Main uses

• Avoiding intellectual property risks in advance (FTO investigation/clearance investigation)
• Explanatory materials for business partners (when manufacturing is outsourced, etc.)
• Risk assessment of new business

Investigation reports are effective for risk management before starting a business, but they are not used directly in court or for the enforcement of rights.

2. What is a certificate of authenticity? (formal document that can stand trial)

Expert opinion is a document in which an expert determines patent infringement and the scope of rights in designs and trademarks, and can be used as evidence in trials and trials.

Compared to a general IP investigation, the following extensive considerations are conducted.

🔍 Points to consider in the appraisal report

1. Success or failure of infringement (Is the patent or trademark of another company infringed?)
2. Validity of rights (Is the patent valid in the first place?)
3. Whether there are defenses such as prior user rights (whether there is a legal basis for avoiding infringement)

You might think, "If it's needed in court, why not just request an expert opinion at that time?" However, it may be too late.

⚠ Why you need a certificate of authenticity

For example, suppose Company X sends a warning letter to a competitor for "infringing a patent. However, if the patent infringement does not actually occur, Company X risks receiving a claim for damages for interfering with the other party's business.

In order to prevent such troubles, it is important to carry out an appraisal before sending a warning letter to confirm whether the infringement has occurred and whether the rights are valid.

⚠ Rights that require special attention: Utility model rights
Unlike patents, utility model rights cannot be exercised unless a "utility model technology evaluation report" is obtained. Prior appraisal is required, so a more careful approach is required.

3. What is a position paper? (Simplified version appraisal report for internal use and business partners)

A written opinion has the same level of expertise as an appraisal report, but it isa document that is primarily used as a basis for judgment within the company and with business partners. It is rarely used as evidence in court, and it is easier to understand if you think of it as a simple expert opinion report.

✅ Main uses of written opinions

• Internal approval (decision making materials)
• Preliminary check when requesting manufacturing to other companies
• Supporting materials when the investigation report is insufficient
• Obtaining a second opinion (verification of research results from other firms)

Especially when the scale of the project is large and careful judgment is required, a written opinion can be used to obtain a more objective opinion.