6 Considerations For A Successful Freedom To Operate Search
Due diligence is of utmost importance when it comes to infringement issues in Intellectual Property. One wrong step can open doors to complex and expensive litigations that can be a drain on resources. Fortunately, these risks are completely avoidable by performing a simple Freedom to Operate Search.
What is a Freedom to Operate Search?
Freedom to Operate implies a company’s liberty to develop, manufacture, and sell a product without impinging on a third party’s IP Rights. To ensure that a product does not infringe on any existing patented rights, it is imperative to conduct a Freedom to Operate Search. The purpose of an FTO Search is to scrutinise the patent landscape to discover any active patents that may prevent you from using your invention freely.
If the FTO reveals a patent that your innovation may infringe upon then there are 3 ways to avert the situation:
- Not proceeding with the intended invention.
- Seeking to invalidate the existing patent.
- Applying for a license to use the technology.
- Buying the patent.
- Cross Licensing with companies who hold the patent.
- Inventing around or Steering Research in a way that it does not clash with the existing patent.
- Patent Pools, where related companies come together to share their technologies.
Steps Involved in a Freedom Search
An FTO Search typically involves the following steps:
Step 1: Pinning down the product features for analysis
Step 2: Running a patent search for the underlined features
Step 3: Record and review all claims that may interfere with the product features and report them to the stakeholders.
6 Pointers for Your Freedom to Search Strategy
A thorough Freedom to Operate Search can highly reduce the chances of a patent infringement. Below are some points to keep in mind before conducting an effective Freedom to Operate Search:
Each stage of the innovation process warrants a FTO Search for thorough results. In the initial stages one may not look deeply into every patent claim as the scope of their applicability may undergo changes by the time it reaches the filing stage. The frequency of a Freedom to Operate Search will also vary with the type of industry. In areas where tech evolution is swift recurrent searches will be the norm.
While a Freedom to Operate Search is recommended and can save you millions by averting infringement, one needs to weigh the costs against the benefits. Through searches are expensive to conduct, so if the investment and ROI are on the lower end of the spectrum then a cursory Search is recommended. It is common practice to limit the search to the core features of the product when working with limited resources.
Even companies with a high-risk tolerance do not want to get embroiled in infringement cases that are not just a drain on the resources, but also tarnish their reputation. In case of a high-risk tolerance, one may consider a superficial FTO Search rather than doing away with it completely. Risk-averse companies on the other hand must rely on in-depth, comprehensive searches.
If your company is in an industry where patents are a norm then thorough FTO Searches become highly significant. This also means that the scope of the search becomes almost indefinite and exhausting. In order to prevent the search fatigue it is best to proceed in an organise manner. Begin the search by analysing your key competitor’s patents and then move on to an industry-wide search. Tools with semantic and Boolean search capabilities are very useful in these searches. To avoid widening the scope of your search, stick to the country of operation.
Highly competitive industries like biotech, pharmaceuticals, consumer products, electronics etc are prone to a plethora of patent infringement litigations. In such markets prevention is better than a long-embroiled infringement battle. If your product/tech is to launch in a competitive market then it warrants a detailed and exhaustive Freedom to Operate Search.
If a product is designed for operation in domestic markets only then the FTO Search may be limited to few prominent offices like USPTO and EPO. However, if the aim is to expand to international markets then the nature and extent of your search widens.
Conclusion
A Freedom to Operate Search is a crucial step in determining a company’s ability to successfully introduce and commercialise its products and inventions. It is best to rely on experts for these searches in order to ensure there’s no error. Firms specialising in Freedom to Operate Searches have industry specific expert searchers, access to leading and authentic databases, and cutting-edge technology at their disposal. Their global experience combined with tech makes them a formidable companion in your FTO Search endeavour.
