Freedom to Operate:
A Short Guide
- March 16, 2024
- Jenny Rose Santillan | Parola Analytics
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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.
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.
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.
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.
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.
Ensure you are not acquiring technology or patent assets that are already protected by someone else’s IP rights.
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.
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 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:
4. 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.
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.
If the freedom-to-operate (FTO) search reveals that there are indeed patent barriers, these are some of the options to consider:
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.
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.
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.
In some cases, organizations use the results of a freedom to operate search and analysis to identify grounds for invalidation of the “blocking patent”.
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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Disclaimer:
1. Parola Analytics and Avontis are distinct entities and operate independently. Any references to Avontis or its services do not constitute a legal partnership.
2. Parola Analytics does not provide legal services. Our services are limited to research and technical analysis. Any information provided by Parola Analytics should not be construed as legal advice.