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.

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.

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What our clients are saying

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