Before you begin the commercialization of your product/technology, it is essential to conduct a freedom to operate (FTO) search (also known as Clearance Search, Right To Use search) to ensure that the desired product can be safely launched in a specific market (countries or regions) without infringing or violating a valid and live patent within that particular jurisdiction.
Freedom to Operate Search is usually conducted before the launch of a new product or before the initiation of R&D development for a particular product. Conducting an FTO search can minimize the risk of patent litigation, and maximize competitive strength, meet investor expectations before funding, or identify potential acquisition targets, which can add strength to the existing product portfolio.
We, at IP and Legal Filings (IPLF), have a fruitful and enriching working experience in several technology domains ranging from Biotechnology, Biomedical, Healthcare, Mechanical, Chemical, Pharmaceuticals, Electrical, Electronics, Telecommunication, Metallurgy, Semiconductor, Software, to Information Technology. An extensive patent search is conducted on several paid and free databases (with a global coverage) along with searches on country-specific regional databases (especially to determine the legal status). In order to ensure accuracy of legal status, we do not completely rely on the automatic databases, and instead manually cross-verify the legal history on each country-specific database (such as DPMA register, KIPRIS, SIPO, USPTO etc.).
1. Non-disclosure agreement
Confidentiality is of concern to any investor. We completely understand that. To give you complete assurance that your invention will be confidential with us, we sign a Non-Disclosure Agreement (NDA) and only then we initiate the project.
Once we receive the detailed description of the product that is intended to be launched/commercialized along with the features and the market/territory/country in which the product is intended to be launched, we initiate the FTO search through our in- house team of professionals with strong experience in various technical domains. Thereafter, we design appropriate and comprehensive search strategies that include a selection of keywords, forming the search strings and thereafter conducting searches on free or paid databases. Usually, at least 3-4 people are part of the search team to bring a complete 360 Degree perspective into the search.
Once we obtain results after searching various databases, a comprehensive analysis is carried out. Our years of experience in various aspects of patenting help us in separating the wheat from the chaff.
Based on our in-depth analysis, we conclude whether the product is likely to infringe on any granted patent/pending patent application in the country of interest, and we certify whether the product is good to proceed with the commercialization along with the associated risks.
- Product description.
- Features and/or sub-components that require clearance.
- Territorial/Geographical scope of the search
1. When Should a Freedom to Operate Search be Conducted?
A freedom to operate search should be carried out as early in the product or process development cycle as possible.
2. What does an FTO search focus on identifying?
An FTO search focuses only on active patents/applications that have a claimed scope which can cover the product that is intended to be commercialized.
3. What Is a Freedom to Operate Analysis?
An FTO analysis of the retrieved search results focuses on the claims of the identified patents/pending applications to determine whether the product that is intended to be monetized falls within the scope of the claimed subject matter of the identified patents/pending applications. During such analysis, other sections of a patent application such as the specification and the drawings are not given a high priority per se, but are surely key to determination of the overall scope of the patent/application per se.
4. What Is a Freedom to Operate Opinion?
An FTO opinion is a written document that states the legal opinion of a Patent Attorney about any infringement of a product or process upon other patents.
5. If FTO exists for a product, does it mean that the product is patentable as well?
Freedom to operate (FTO) does not guarantee the patentability of a product. In ascertaining FTO, it is determined whether a product feature is violating any rights of an active patent/application. Typically, search in an FTO study is limited to the country where the product or feature is supposed to be launched or sold or used or manufactured. In other words, in FTO, the search and analysis would be restricted to active patents and the country (or countries) where the product or feature is to be launched or sold or used or manufactured. In ascertaining patentability, is a complete contrast where the product or feature is analyzed based on novelty and non-obviousness concerning all available prior art. Here, the prior art could be a patent as well as a non-patent literature. On the other hand, there is no need to search for non-patent literature in an FTO study as it is only concerned about ascertaining the freedom to put out the product in the market without infringing any patent rights. Basically speaking, a patentability search must cover all publications, including prior art and non-patent literature, to determine whether the product or process at issue is novel and can indeed be patented.
An FTO search, on the other hand, focuses its search strictly on patents, since it is only active patents (and not other types of documents) that give the holder(s) the right to pursue Litigation.
- All publications (Patent Documents as well as Non-Patent Literature)
- Usually faster and not as expensive
- Granted patents, pending patent applications, and potential PCT application that may
- enter into the country of interest.
Usually more complicated, time-consuming, and expensive.