A Freedom to Operate (FTO) analysis invariably begins by 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.
Not having the freedom to operate is not the end of the world as there are still many ways to produce your invention. The point of an FTO search is to find out if there’s anyone that has active protection on an idea that you want to pursue and, from there, determine the level of risk that would be associated with market entry. In other words, the focus is on understanding whether you are able to produce a specific invention that you have in mind as opposed to giving you ideas on what is free to create — although this can, of course, be an interesting side-effect.
When to consider FTO
There are two different schools of thought regarding when FTO searches are appropriate during a development process:
- Early search: If you conduct a search early in your innovation process, your invention might evolve and change so much during development that it no longer matches the original searches you performed.
- Late search: On the other hand, if you wait until the later stages of development and you find that you are infringing, it might be too late for you to alter the invention enough to no longer encroach on a patent.
By using IP analysis it is reasonable to perform FTO searches throughout the entire process as an ongoing activity. This means an organization can ensure that it remains thoroughly vigilant and is not just dipping into awareness now and again.
What happens if you don’t have FTO
The good news is, when you do find a patent that seems to match your idea, whenever that might occur during the process, there are still many reasons why it might still be possible to produce that invention. There are certain aspects that can then be checked in order to determine next steps:
- A patent might not have been protected globally — and if it is, patents are not necessarily the same in each jurisdiction/patent office
- Just because patents have been applied for in a variety of different countries, doesn’t mean they have been successfully granted
- Patents that were granted protection may not have been maintained, and therefore could have lapsed or expired
- Patents issued in different places may have variations in their claims, perhaps broader or narrower, so it is important to read each patent carefully, no matter how similar they seem at first.
- There could be opportunities to license a technology — FTO searches can reveal who your potential licensors are
For this reason, having ongoing access to IP information is essential for both R&D and IP teams within an organization. The greater the collaboration between these departments, the higher the chance that resources can be used more effectively during R&D and the product development process.
While FTO searches only involve patents, patentability searches are a different matter. Just because you have freedom to operate in an area, it doesn’t mean you can patent there. As we know, in order to patent an invention, it has to be entirely novel. No-one can have publicly shared that idea ever before, anywhere. This means if you’re looking at patentability, then it has to be remembered that aside from patents, any public facing information could hinder your plans to patent a particular item. These sources can be extremely wide-ranging and could include websites, scientific journals, industry publications, and general media.
The Art of the Search
Once we’ve established whether we are conducting a freedom-to-operate search or a patentability search, we can commence the actual process of searching as we have established the spectrum of media we need to take into account. As far as patent analysis is concerned, there are numerous different approaches to conducting a search. One might consider a semantic search, one might use definitions within the International Patent Classification (IPC) or Co-Operative classification (CPC) system, one might use Boolean operators, or indeed a combination of a number of these in order to isolate the most useful information.