What is a Freedom to Operate Search?
A Freedom to Operate Search is also known as Infringement Analysis or Clearance Search or Right to use search or Freedom to practice search and more often is abbreviated as the single word – FTO. A Freedom to Operate (FTO) analysis is performed by searching patent literature for issued and pending published patent applications claiming important features of a product, process or service to be launched, and obtaining a legal opinion as to whether a product, process or service is infringing any patent(s) or patent pending application (s) owned by other party in the country or jurisdiction where the product is intended to be launched. Freedom to Operate Search helps in the identification of potential patent barriers in a particular jurisdiction of interest, for commercializing any product, process or service or technologies of interest to reduce the risk of costly and time-consuming future litigation.
The search can be performed by an experienced team of patent analysts and includes relevant granted patents, published patent pending applications and sometimes, expired patents as potential clearing documents. An FTO report usually contains the relevant search results, analysis, and opinion. It can be a valuable resource for a company, especially for the product or process development.
Why do we perform a Freedom to Operate Search?
Patent litigation is a highly expensive affair and hence, no entity or company would like to be a part of it as a defendant. It is always a safer approach to be prepared in advance without any fear of future litigation cases. With the advancement of technology, availability of paid databases for patent search and highly qualified patent searchers, it is possible to search and understand chances of patent infringement through FTO searches prior to product development. It is really needful doing FTO searches right at the beginning of the new project launch. A proper FTO analysis not only reduces the chances of having to go through patent infringement litigation, but it might also open up new business prospects by showing variety of possibilities and void spaces of technologies present in the marketplace and also minimizing risk of infringement for third parties. A complete, exhaustive search and professionally analysed FTO opinion strengthens the organization’s confidence.
How a Freedom to Operate Search is performed?
A Freedom to Operate (FTO) analysis includes searching patent literature for issued or pending patents, and obtaining a legal opinion as to whether a product, process or service may be considered to infringe any patent(s) owned by others.
To perform a Freedom to Operate (FTO) analysis, following points should be considered by an analyst or searcher:
- Jurisdiction restriction: Patent protection is territorial, so while a certain product is patented in a particular jurisdiction only, and the client is launching the same product in other jurisdiction or countries, no permission (or license) is needed from the patent owner in order to commercialize the product. So before starting the search, analyst may collect the information from the client about his/her jurisdiction of interest.
- Date restriction: Patents have a definite term duration. Patent protection lasts for a maximum period of 20 years and sometimes may extend to additional few years as in case of Supplementary Protection Certificate (SPC) and Patent term extension (PTE). Thereafter, a patent is considered to be in the public domain and may be freely used by anyone. Therefore, a date restriction should always be applied on patent databases to analyse only active patents and pending applications. PCT applications filed in last 31 months are also screened in conduction a Freedom to Operate (FTO) analysis.
- Which part of the patent to be focused? The claims section in a patent document determines the scope of the patent protection. Any aspect of an invention not covered by the claims is not considered to be protected. Therefore, focus should be given to claimed features in any patent. It requires considerable experience in interpreting the claims of a patent document.
- Legal status of a patent or patent application: Legal status refers to the status of an application or Intellectual Property Right according to the applicable law of the prosecuting Intellectual Property Office and is determined based on preceding events. The status of a patent or patent application may be: filed, granted, denied, withdrawn, re-examined, reissued or expired. Expired, denied, withdrawn, rejected or revoked applications or patent document serve as potential clearing documents. Therefore, active patents and active applications should be given priority while searching.
- Doctrine of equivalents: The doctrine of equivalents is a legal rule in many jurisdictions that make a party liable for patent infringement even though the infringing device or process does not cover the exact features of a patent claim, but is equivalent to the claimed invention. A claim may be infringed under the doctrine of equivalents if it falls under the triple test, i.e. equivalence device or process holds when the equivalent component performs substantially the same function in substantially the same way to obtain the same result. Therefore, active patents and active applications claiming equivalents should also be checked while searching.
- Easy to interpret report: The final report presented to the client should include easily understandable matter in a professional way. The report should contain the relevant result and additional result with bibliographic details and mapped features in a way that client can get the insight in easiest way possible. Each result should be provided with latest legal status which should be obtained from country specific patent office sites.
- International application, or PCT application: An international application, or PCT application is a patent application filed under the Patent Cooperation Treaty (PCT), which is an international patent law treaty, providing a unified procedure for filing patent applications to protect inventions in each of its contracting states.
What are the benefits of a Freedom to Operate Search report, and What to do after getting a Freedom to Operate Search opinion?
A Freedom to Operate analysis, based on the search of granted patents, published patent pending applications and expired patent literature is just the initial step. If the Freedom to Operate analysis comes with an outcome that one or more granted patents and/or published patent pending applications can be potential barrier in freedom to operate for a product, process or service or technologies of interest, the company must decide the next steps favouring the safe launch of the product, process or service or technologies. The company can opt for following steps:
- a) Buying the Patent rights;
- b) Licensing;
- c) Cross-licensing;
- d) Design around or Invent around; and
- e) Patent pooling
In conclusion, a Freedom to Operate (FTO) search is a crucial step every technology company should opt prior to commercialization of their product, process, or service to avoid expensive law suits.