What protection does section 298 provide?
Under 35 U.S.C. 298, failing to obtain advice of counsel, or failing to present that advice to the court or jury, may not be used to prove willful infringement or intent to induce infringement. An opinion should therefore be evaluated for its actual analytical value, not treated as a mandatory response to every allegation.
What should the analysis cover?
Give counsel accurate product details, the asserted claims, the relevant dates, and the business decision at issue. Ask whether the work addresses literal infringement, equivalents, invalidity, or a particular redesign. Identify assumptions that would need updating if the product or asserted claims change.
Does an opinion guarantee protection from enhanced damages?
No. Halo Electronics, Inc. v. Pulse Electronics, Inc. places enhancement within the court's discretion, directed at egregious cases. Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc. distinguishes that decision from the factfinder's willfulness inquiry. An opinion is not an automatic disposition of either question.
How should I handle the document?
Discuss recipients, confidentiality, and the consequences of relying on the advice in litigation before circulating it. Keep the analysis connected to the actual facts and decisions it was prepared to address.