The One-Time FTO vs Recurring FTO Debate: A Closer Look

January 27, 2023
- Freedom to Operate

The definition of a Freedom to Operate (FTO) search is to look for active pending publications, expired patents, and ian-force patents in a jurisdiction of interest. An FTO search is conducted to identify and foresee potential infringement and lawsuit risks. Generally speaking, the FTO search is also known as the Clearance search, Freedom to Practice (FTP) search, non-infringement opinion (NIO), and Right to Use search. The detail information about the FTO search and strategies to perform.

Introduction

The freedom to operate searches can be divided into two main categories:

Those who like to have FTO studies performed repeatedly as the product and its features throughout the product development cycle.
Those who prefer to have this study performed just once.

One Time FTO vs Recurring FTO

There are basically two factors that influence the strategy for picking either one-time FTO or recurring FTO. These include:

Research and product commercialization timeframe: Few items or features, say 8 to 10 months, require less study work and less time to reach a market. A single FTO study is sufficient for these items because there won’t be many patents published in that little period and the risk is minimal. However, they prefer to keep an eye on or receive updates on the FTO study for the goods or features when the product development cycle is lengthy. These updates assist the R&D teams in keeping up with the most recent advancements in the market, shifting consumer preferences, and better managing their operational flexibility.
The R&D team and IP Counsel work closely together and communicate: The R&D team and the IP team in some businesses work extremely closely together. We reasoned that close cooperation is more a function of an organization’s culture than of the kind of product it creates or the industry it serves.

Counsels prefer to get updates on the FTO studies in a setting where teams frequently debate the possibility of new features, the application of features in other application areas, the extension of their products by merging some features, etc. They use FTO landscape analysis, which provides the optimum solution for their problem.

To ensure that the product being created does not violate the current scope of other people’s patents, IP counsels received a one-time FTO in contexts where R&D teams occasionally collaborate, whether after concluding their own research or at the start of their research. In such cases, this is simply done since a procedure has been established in the business and must be followed. The FTO’s goal in this situation is risk management, therefore its secondary value of acquiring intelligence is disregarded.

In a few instances, some attorneys disclosed that they chose recurring FTO because they have received internal information indicating that there is a good chance that their rivals may be working on the same issue and may have applied for patent protection; however, the application may not yet have been published. Since competitors may later utilize these patents to cause difficulties, IP counsel frequently obtains FTO studies to help manage future risks.

Some attorneys have mentioned that they have observed their R&D team using recurrent FTO reports to obtain superior alternatives to those covered by patents. Maybe two birds and one arrow?

Advantages of Recurring studies over a one-time study

The IP attorneys who choose to do FTO studies only once either start or finish their research and development projects.

If it is carried out later in the research and development process, let’s say right before the product launch, then:

There is a chance of losing a chance to file a patent, which could have been identified in an early FTO examination. Competitors with similar product lines can obtain a patent on the idea you were exploring and may already have done so if other companies are working on the same technology.
Counsels might not be able to strategize adequately in time, so they can assess if conducting research is necessary or whether an acquisition or licensing activity can yield greater returns if favorable solutions are already accessible.
Counsels might not be able to help the R&D team with information that could alter the course of the investigation.

FTO should only be undertaken early in the research and development process if the product cycle is lengthy. The possibility exists that patents between the execution of the FTO research and the product launch will be overlooked. Counsels might not be in a position to assess the risk of characteristics that are incorporated during the study.

Advantages of Recurring studies over a one-time study

One can be confident that none of the challenges would act as roadblocks during the product launch thanks to ongoing FTO studies. But every issue has a special answer, as they say. The option that best meets your demands must be chosen. Our recommendation is to select one-time FTO studies for items with short R&D cycles and ongoing FTO studies for those with longer R&D cycles. With time to rest, you may more accurately assess your needs and your surroundings and determine what will serve your purposes the most.

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