It's very exhilarating to bring a product to market, but it does carry certain risks. Arguably the least valued risk is patent infringement. Even for a technological invention, you can face litigation in the event a party holds patents for elements of your technology, procedure, or design.
That's where a freedom to operate (FTO) search comes in. It determines if your product can be sold, utilized, or produced for your targeted market without infringing on any patents.
In this in-depth resource, we are going to outline what an FTO search is, why it is important, conducting a good one, things to avoid, and real-life examples.
What is a Freedom to Operate (FTO) Search?
A freedom to operate search is a commercial patent search. Its purpose is to establish whether a product may legally be commercialized in a particular market without infringing on technology that is patented.
While a patentability search tries the question "can I patent such a device?", an FTO search tries the question "can I bring such a device to market without infringing a third party's rights?".
It's only enforceable, active patents in jurisdictions where you are going to market or manufacture.
It encompasses:
- Finding 'hot' patents for your product.
- Examining their allegations and statutory position.
- Determine if your product infringes on such claims.
An FTO search is no guarantee against risk. It does, however, significantly reduce exposure and offers the necessary certainty for business strategy, licensing, or redesign projects.
Why conduct an FTO search before introducing a product?
An FTO search might seem a frivolity on a billable expense report, but the expense in not having one done can quickly outweigh it.
Main advantages are:
- Risk reduction: Identifies patents that could block commercialization.
- Cost reduction: Avert future litigation costs and redesigns after product release.
- Better negotiation: Assists in procuring licences on favorable conditions where needed.
- Investor sentiment: Displays caution and minimizes perceived risk.
- Strategic focus: Directs product design, product development, and entry into markets.
Example:
A medical device start-up previously waived an FTO search in an attempt to reduce expenses. After entering the market, they were hit with a patent infringement suit from a big competitor. The outcome was years of litigation, millions in damages, and a loss of investor confidence.
If they had done a search under FTO, they could have known of the conflicting patents much earlier and altered their design.
Important Steps in Performing a Freedom to Operate Search
Establish the Scope of the Search
The first is to establish limits. Decide:
- Jurisdictions where the product shall be produced and sold.
- Product characteristics most likely to cross with existing patents.
For instance, in case your product is a wearable device for the U.S. and European regions, you'll need to pay attention to USPTO and EPO patents.
This avoids having your search go to waste on non-applicable regions or features.
Evaluate Patent Databases and Literature for Relevance
FTO searching is highly database-dependent.
Free databases are USPTO, EPO, and WIPO, and commercial databases such as Derwent Innovation or Orbit Intelligence offer more sophisticated tools.
Non-patent literature is also informative. Competitor product manuals, technical articles, and trade show literature can identify risks.
Comprehensive coverage is also needed because exclusion of a single major patent can nullify the entire endeavor.
Interpret Active Patents and Legal Status
All patents aren't risky. Many are outdated, abandoned, or not enforceable.
Filtering on legal_status reduces consideration to just such enforceable patents.
For each patent, check:
- Expiry date.
- Pay maintenance fee.
- Pending litigation or dispute.
Outdated patents go into the public domain, no longer restricting commercial use. Comprehensive analysis is reserved for only enforceable, active patents.
Evaluate Patent Claims and Risks Posed
Patent claims define the legal boundaries of protection. A single word can change the scope dramatically.
For instance:
- A mobile device with a touchscreen" is a generic definition.
- A patent for a "mobile device having a curved-edge touchscreen" is a narrower claim.
Your product's characteristics must also be compared alongside such assertions. Where there is overlap, the risk of infringement is high.
Among these are:
- Design-arounds: Alter the product to sidestep the infringing claim.
- Licensing: Negotiate with the holder of the patent.
- Cross-licensing: Swap rights if you own patents they'd want.
Write a Detailed FTO Report
Last deliverable from a search is an FTO report, in which are recorded:
- List of patent applications reviewed.
- Legal status and jurisdictions covered.
- Analysis of claims compared to your product.
- Risk levels and strategic opportunities.
It is a practical decision-making tool. It determines whether to go ahead, redesign, or acquire licences prior to launch.
General Issues in FTO Searches
- Large patent volume: Thousands of records are available for retrieval. Concentration entails specialty.
- Unclear statements: Patent language is generic and therefore difficult in interpretation.
- Unpublished apps: Unpublished apps exist, resulting in blind areas.
- Jurisdiction differences: Patent laws vary widely between countries.
- Constant updates: Status may change any time if fees are expired or disputes arise.
Due to these challenges, companies routinely augment in-house searching with qualified patent lawyers for legal interpretation.
Pragmatic Advice for a Successful FTO Search
- Begin early in product development to start searching.
- Set the main technical characteristics of the product.
- Cross-check the output in several patent databases.
- Track maintenance fees and expiration dates of major patents.
- Store your search plan for future use.
- Obtain a legal opinion on high-risk discoveries.
These steps enhance reliability and save you from unpleasant surprises in the future.
Case Study: Consumer Electronics
A consumer electronics firm was preparing to market a voice-Integrated Smart Speaker. Prior to the release, they performed an FTO search.
The search yielded a finding of a competitor who holds a comprehensive patent for "wireless speakers with voice command feature in-built."
Instead of subjecting themselves to litigation, the firm negotiated a licence from the competitor.
It led to a smooth product release, did not provoke any lawsuits, and even established a new partnership for future projects.
Case Study: Pharmaceutical Industry
A generic product was set to be launched from a drug company. An FTO search exposed a series of formulation related patents.
More scrutiny showed that some of these were nearing expiration while some were already invalidated as no fees were paid.
By carefully timing the launch, the company entered the market legally and avoided multi-million-dollar infringement disputes.
This example illustrates why FTO searches are invaluable in high-risk litigation industries.
FAQs on Freedom to Operate Searches
Q1: How often should I use FTO search?
Ideally early in product development, before heavy investment. It then allows time for refinement in the event there are identified risks.
Q2: How is a search for FTOs different from a patentability search?
A patentability search determines whether you can patent an invention. An FTO search determines if you may use it without infringing on the patents of others.
Question 3: Can I perform an FTO search myself?
You could then search through some of the free patent databases. Reading the claims and legal status, however, requires experience, and professional help is often needed.
Q4: Does an FTO search eliminate any risk?
No. Some remain in effect due to unpublished applications or a change in legal status. It, though, eliminates much ambiguity. Q5: How much does an FTO search cost? Costs are set on a product complexity and jurisdictional scope basis. It is high but lower than the cost of litigation. Conclusion and Next Steps
Conclusion
A freedom to operate search is one of the main safety nets for product introducers. It prevents patent surprises, litigation, and investor and partner confidence. Whether start-up or mature company, FTO searching ahead of time prevents wasted time, money, and reputation. Although you may use simple database searching, you may use professional assistance for expanded coverage and proper legal interpretation.
Protect your product release today. Find out more on professional FTO search services at InventionIP's Freedom to Operate Search .
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