Freedom to Operate Search: A Short Guide

March 16, 2024

What is a freedom to operate search?

A Freedom to Operate (FTO) search, also called clearance search, identifies and examines existing intellectual property, such as patents, in a given jurisdiction that your product or process could potentially infringe upon.

When is a freedom to operate search conducted?

By conducting a freedom to operate search and analysis prior to product development, launch of a product, entry to a new market, or acquiring new technologies or a company, your organization can mitigate the risk of future legal disputes.

Here, we’re going to outline the various “timings” or circumstances that would warrant an FTO search and analysis.

1. Product Development

Early design or development stage

Identify early on what elements or features of your product are already protected by existing patents. At this early stage, you can make the necessary design modifications to avoid potential patent infringement.

If your industry is crowded or has a history of patent litigation, it is advantageous to seek an FTO opinion before investing significant resources on R&D.

2. Pre-Product Launch

Late development stage or pre-product launch

Because the product development process can take some considerable time, it is important to make sure that the final product design that will be launched to market will not infringe on existing patents. It is important to note that new patent applications might have been published during this time.

3. New Market Entry

As patent rights as territorial, it is important to ascertain that your product will not be infringing upon existing intellectual property rights in a given region or jurisdiction.

Determining which regions your have “freedom to operate” can also inform your overall business strategy.

4. Technology or Company Acquisition

Ensure you are not acquiring technology or patent assets that are already protected by someone else’s IP rights.

Book an FTO search consultation

How do I conduct a freedom to operate search?

As every type of prior art search is different depending on its intent, we have outlines a few steps to get you started on a freedom to operate or clearance search.

1. Identify key features and components of your product

Break down the elements or features of your product that could potentially be of concern. This may be the novel features of your product.

If certain components were licensed, find out if such technologies are protected in the new jurisdiction.

2. Understand background information

Asking the following questions will help you narrow down your search and provide you with relevant leads.

When is the product (going to be) launched?
What are the countries where the product will be sold?
Who are your key competitors?
Are there significant litigation in your technology area? Who are the most common litigants in the space?
Who are the key inventors in the space?

3. Search for patents and published patent applications

Unlike other prior art searches, the focus of an FTO search are patents and published applications.

Consider structuring your search by:

Searching by assignees
Searching by patent classification codes
Searching by keywords

Searching by keywords will be an iterative process, and will require optimization through trial and error.

4. Review selected references

Once you have identified relevant patents and patent applications, consider expanding your analysis by:

Reviewing forward and backward citations
Review prior art listed in the patent document itself
Review the file wrapper and look at the patents cited during prosecution
Examine the figures if any
Review the independent claims

5. Map the patent claims to your product features

Product-to-technology or claims-to-product mapping are typically part of every clearance search. It helps create a better understanding of what aspects of a product, service or process are potentially infringing on existing patents.

There were no patent barriers found. What next?

The results of the search will be the basis of an FTO analysis, which examines the patent claims and assesses the risk or level of infringement.

A freedom to operate opinion or “right to use” opinion is given by a qualified IP attorney.

If the FTO search and opinion indicated that there are no existing patents that could potentially be infringed upon, the business can then proceed with commercializing or launching the product to marker.

The inventor or organization may also consider filing patent protection to “ensure a greater degree of freedom to operate”.

However, it should be noted that a freedom to operate search differs from a patentability search (or other forms of prior art searches) because on its intent. In an FTO search, the concern is not to ascertain if the invention is patentable. It is concerned primarily with the potential infringement risks when a product or process is launched or brought to market.

What can I do if there are blocking patents?

If the freedom-to-operate (FTO) search reveals that there are indeed patent barriers, these are some of the options to consider:

1. License or buy the patent

Negotiate a patent licensing agreement with the patent owners. This would involve obtaining permission from the patent holders to use their patented technology in your product in exchange for royalty payments or other agreed-upon terms.

Another option is to purchase the patent.

2. Redesign your product

Another option is to modify your product to avoid infringing on existing patents. This may involve changing features or elements of your product to ensure that they don’t fall within the scope of the patented claims.

3. Cross-license

If you own patents that the other party may be infringing upon, you could explore the possibility of a cross-licensing agreement. This involves both parties granting each other permission to use their respective patented technologies.

4. Invalidate the patent

In some cases, organizations use the results of a freedom to operate search and analysis to identify grounds for invalidation of the “blocking patent”.

5. Seek legal opinion

It is crucial to consult with a qualified patent attorney to discuss your specific situation. They can provide advice tailored to your circumstances, help you understand the potential risks and benefits of each option, and guide you through the legal processes involved.

FTO Search Services

Expert-led FTO search

A dedicated US-registered patent attorney or subject matter expert, leading and supervising your freedom to operate search projects to ensure high quality results.
Cost-effective, flexible arrangements

At Parola Analytics, we are committed to finding the best solutions with our clients. Customize solutions that suit your requirements, budget, and easily integrate them with your workflow.
Easy-to navigate reports

Concise, easy-to-navigate prior art search reports and claims mapping charts that provide you with a clear visual presentation of relevant disclosures.

Book a consultation

What our clients are saying

“The first search Parola Analytics, Inc. performed for us provided the key reference supporting our invalidity position on a patent we were evaluating.”

Sean M. Dean, Ph.D.

Fish & Richardson

“Vincent and his team at Parola are excellent at locating prior art. We have worked with Parola on two matters, and both times, Parola delivered outstanding results. Parola’s highly-relevant search results and reports demonstrated a thorough understanding of the patent claims.”

Daniel Kiang

Knobbe Martens

“Vincent Violago and his excellent team at Parola Analytics provide high quality, detailed, prior art search results with minimal oversight and handholding. These guys are highly educated and experienced in their field and work together with great efficiency. The work product is top-notch, and they are always available for follow up, including detailed discussions of the report and additional pinpoint searches based on the results. I highly recommend Vincent and his team.”

James A. “Tripp” Fussell III

Mayer Brown

"Parola analysts uncovered prior art that even opposing counsel’s team could not during litigation. The quality of their work and deeper understanding of the subject matter were instrumental to the case that we eventually won.”

Saqib J. Siddiqui

Mayer Brown

“The team at Parola Analytics did an excellent job in providing us with the highest-quality prior art research service.

The team’s search report highlighted the best prior art references with an easy-to-understand format. In short, the team proved itself.”

Ryan Phelan

Marshall, Gerstein & Borun LLP

“I recently engaged Parola Analytics to conduct a prior art search on a difficult US patent that had already stymied another search firm that delivered two unusable references.

Parola found four much better references in two weeks that demonstrated a deeper understanding of the search and an effective selection of the best references.

I highly recommend Parola Analytics.”

Barry Shelton

Shelton Coburn

“Parola Analytics is our trusted partner for prior art search contests on PATROLL, Unified Patent’s crowdsourcing platform.

With their expertise in prior art searching, Vincent and his team at Parola Analytics are valuable partners in reviewing prior art submissions to our contests.

Parola Analytics provides broad knowledge across various subject-matters and offers competitive pricing.

They are easy to work with and are responsive to our needs.”

Sam Jaffna

Unified Patents

“In just weeks, our investments in our relationship with Parola Analytics started to pay handsome dividends. Parola Analytics identified a patent filed by researchers at Yale that showed promise as a vaccine against malaria. Our article, authored by Monisha Ravisetti, was publicized in hundreds of newspapers and magazines worldwide and quoted thousands of times on social media. Parola’s flexibility proved invaluable for a startup company like ours, and the reasonable fee structures allowed us to invest in the relationship with confidence.

Marius Meland

Founder, Law360

CEO and Founder, Fastinform

“Parola Analytics has consistently provided excellent search results coupled with an easy to navigate and detailed search report. Parola’s responsiveness and communication are exceptional. I highly recommend Parola.”

Chris Hadley

Jones Waldo

“Parola Analytics is an outstanding resource for our boutique intellectual property firm. Patentability searches are the first step for new patent clients. Vincent and his team take care of this crucial step, and provide us with high-quality and comprehensive search reports. The search reports provide our clients with a clear visual representation of the state-of-the-art and make our counseling even more impactful. Our patent practice is enhanced by Parola Analytics’ search capabilities, and our favorite find is Parola Analytics.”

Justin H. Cross

HamiltonCross LLP

“Parola Analytics was able to quickly provide us with a key prior art reference despite other search vendors failing to find anything useful. Parola’s thorough search report also provided detailed analysis and allowed us to easily assess the viability of the references and efficiently create invalidity contentions. Would highly recommend.”

Luc Dahlin

Goodwin Procter

“It was an absolute pleasure working with Parola Analytics. Vincent Violago is very responsive and professional. He answers all your questions and ensures the right person does the search. The patentability report provided is very visually pleasing and easy to follow.

The searcher (who is a PhD chemist and registered US Patent Agent) took great care to understand the claim language of a biotech invention prior to doing the search. A very thorough search was done in a timely and efficient manner. I highly recommend Parola Analytics for patentability searches.”

Imtiaz Billah

Torrey Pines Law Group PC

“Parola Analytics is the perfect fit for us, start-ups. They offered us the flexibility we needed for our unique needs. We received high quality results fast at competitive prices.”

Alfredo Carranza

i6 Technology

“We commissioned Parola Analytics for a patent invalidity search. Within a couple of weeks, Parola provided useful prior art references along with an easy to digest report explaining how the references related to each limitation of the relevant patent claim in our case.”

Michael Rhodes

Desmarais LLP

I am delighted to wholeheartedly recommend Parola Analytics for patentability searches. For a recent project I had done by Vincent and his team, Parola Analytics delivered timely work product that was second to none. The search was clearly thorough, and was laid out in a professional, easy to understand and comprehend format complete with excellent graphics, summaries, and in-depth details that enabled me to quickly ascertain my client’s position for patentability. Thank you Parola Analytics! I’ll definitely use your outstanding, cost-effective services going forward!

Tom LaGrandeur, Ph.D., J.D.

P and T Law

For small IP firms looking for a reliable patent research partner, Parola is the perfect choice. Parola Analytics has consistently delivered high-quality results in the various patentability and design patentability projects we have worked on. They have a very collaborative and hands-on approach to each project. The researchers have vast experience and IP knowledge which allows me to get results well-aligned with my specifications.

Tom Tatonetti

Tatonetti IP

“Thank you again for providing the patentability search and report. The report was very thorough, and easy to follow. Also, it appears your standard pricing is competitive and reasonable compared to other searching firms I have engaged.”

DJ Tucker

Harness, Dickey & Pierce

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.We’ve been very pleased with Parola’s search results. They’ve proven themselves to be reliable, responsive, and effective.

Nick Boyarski

Hatch Patents

"The best features of Parola Analytics are the responsiveness, enthusiasm and hands on service they deliver. I intend to use their service on my next search task. Thanks Parola Analytics."

Chris Novak

MoSys, Inc.

"Parola Analytics performed a quality prior art search with a quick turnaround for us."

Kumar Ravula, JD, PhD

Latham & Watkins, LLP

"Parola Analytics provided exactly what we needed for our patentability search. They quickly were able to get to the core of the search and provided an easy to understand report for both attorney and client. They are my first call for my searching needs."

Shawn Diedtrich

Prudens Law LLC

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