Importance Of Expired, Lapsed & Withdrawn Patents In FTO Search

October 19, 2022
- Freedom to Operate

Introduction

Before you start the commercialization of your product, it is important to perform a freedom to operate (FTO) search to make sure that the product is launched in a selected market (nations or regions) without infringing or violating anyone’s intellectual property rights within that particular jurisdiction. It may be performed at any level of product existence cycle to decide the course of product development.

FTO search, additionally known as clearance search or Right-to-Use Search or Right-To-Market is performed on issued patents or on pending patent applications to decide if a product infringes any of the claims of the issued patents or pending patent applications.

Basics to follow while performing Freedom to Operate(FTO) Search:

You are normally only searching patents, since the issue is whether or not the client would infringe an in-force patent (i.e., alive patent).
You must cautiously examine the claims of every patent you locate that is probably relevant. It is the claims, not the descriptions determined someplace else in a patent, which decide what it would take to infringe that patent.
Only in-force patents are of concern, so make sure you limit your date range to the last 20-22 years.
Ensure the geographies of interest for search from client whether to search country specific/Worldwide patents.

Advantages of Freedom to Operate (FTO) Search:

FTO search facilitates to reduce the litigation prices that can be incurred because of an accidental and unknown infringement in a brand-new marketplace space. IP assessment of third parties in a particular technology domain and within a given geographical region helps to evaluate the risk of market entry. Thereafter, the manufacturers can determine which markets to go into and which to avoid.
Tracking patent expirations (legal status analysis) i.e., when the potentially relevant and threatening third party IP rights expire, could also help devise the timing of entry into market.

A Clearance/ non-infringement search can play a critical function in licensing and mergers or acquisitions. It helps explore potential licensing requirements by identifying third parties whose IP rights (patents) could be considered for buying or licensing. At the same time, it also helps understand what potential clients or assignees might be interested to buy or invest in the desired product/technology.
Finally, analysis of already existing products/patents gives an understanding of uncrowded areas in a technology domain. Therefore, freedom to operate search could guide and orient the research and development programs for companies willing to enter a new domain.

Example to Understand Potential Patent that Product Might Infringe:

For example, a patent claiming three key features A, B and C has expired. You now want to launch a product in the market containing features A, B and C. You may be positive that the applicant of the expired patent will now no longer be capable of put in force the expired patent towards you (unless they are capable of reviving the patent by, for example, paying a past due fee).

However, there may also be unexpired patents still existing covering different key features of the product and combinations thereof. For example, assume there is a patent claiming A and B features and some other patent claiming B and C features and each patents have not expired. Your product might infringe the A and B feature patent and the B and C feature patent on the grounds that your product has the claimed features.

Importance of Expired, Lapsed or Withdrawn Patents:

Freedom to Operate search (FTO) is constrained to patents which might be ‘in-force’ i.e., active. However, sometimes, looking into deserted or expired patents additionally offers essential insights.

Freedom to Operate search (FTO) can include expired art that acts as a ‘safe harbor’ permitting the product or process to be used based on patents in the public domain. These patents can be used by the manufacturer to introduce new enhancements in product that may be commercially viable in the worldwide market. With such complete analysis, manufacturers can launch their products without infringing any rights.

The expired patents can also additionally someday assist in invalidating the infringing patent. For instance, if someone intends to invalidate an infringing patent in a particular jurisdiction for a product to be commercialized in that jurisdiction, then the expired patent can also additionally act as prior art for invalidation, in some cases.

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