Why Even Simplest Products Need a Patent Freedom To Operate Search

November 1, 2022

A freedom to operate search is considered a pre-requisite before you decide to invest time and resources into an invention. It helps your business to commercialize an invention without the fear of infringing upon an existing product. Businesses commencing on the journey to create relatively simple mechanical products often ponder on the necessity of conducting a FTO search. This article underlines the criticality of conducting a patent freedom to operate search to minimize risks regardless of the product type or category.

What Is a Patent FTO Search?

Also known as patent clearance search, or right to market search, a patent FTO search is conducted to determine the risk of patent infringement with respect to a certain product.

FTO searches focus on scrutinizing patent claims to detect infringement and can therefore be exhaustive in nature. The language of claims may differ from one application to another making it tedious to pinpoint infringement. Further, the scope of claims is sometimes subject to interpretation, this adds to the complexity of FTO searches.

An FTO search is usually conducted in the early stages of product development so that modifications may be made if the product is found infringing an existing invention. Some companies conduct FTO searches before product launch, as well as after the grant of a patent to attain productive results.

Different Between Patentability Search and Freedom to Operate Search

Both patentability and patent FTO searches are conducted to assess the future of an invention. However, there are significant differences between the purposes served by each.

A patentability search assesses if the invention is novel and can be patented. An FTO search, on the other hand, is concerned with the commercialization of a product and the possibility of infringement.

A patentability search involves scouring existing patents, websites, published material, journals, etc., that may contain prior art references concerning the invention. Searching patent claims and determining their scope to detect infringement comes under the purview of an FTO search.

Sometimes applicants may decide to interpret the results of a patentability search on their own, but this is impossible in the case of an FTO search as it requires solid legal opinion and analysis.

It serves well to remember that a patent is not a guarantee to commercialize the product, as patent rights do not equate to the right to sell in a market. A product may infringe on third-party rights despite being patented. For this reason, FTO is crucial for both simple as well as complex tech-centered products.

FTO Search Process

The FTO search process consists of three steps:

Recognizing the product feature for analysis
Search patent claims similar to product features
Review the shortlisted claims thoroughly to assess similarity/infringement and draft a report.

To keep the search precise and focused, convey the exact scope of your search to the attorney. The countries/jurisdiction where the product will be commercialized must also be communicated to the attorney in order to restrict the search and get better results.

Considerations for an FTO Search

While an FTO search is mandatory, some factors will help you understand the depth and breadth of search required by your product. When formulating an FTO strategy deliberate on the following questions:

The level of investment into the technology: FTO searches are considerably expensive. If your product involves massive investment in R&D then you need to be doubly sure about the freedom to operate. In this case, spare the time and resources to conduct an elaborate search. For low-investment products, a preliminary search should suffice.

The patent landscape in your industry: Some industries tend to be more patent active than others. In industries where patents are the norm, it becomes essential to conduct a comprehensive patent search to avoid unwanted surprises.
The risk tolerance of your business: For businesses that have no-risk tolerance, conducting an FTO search at every stage of development is recommended. If you have a high-risk tolerance then a one-time search should give you the confidence to proceed with product development.

FTO Search Tips

Prioritize competitors and important players in the industry when conducting an FTO search. Run a thorough search on their patent portfolio to identify similarities if any. This is because you are most likely to face infringement litigation from businesses functioning in the same domain.
The main key features of the invention must be accurately identified and clearly listed. Since the entire search is based upon key features, the whole FTO search exercise may be futile if there is an error in this segment.
Citation searches can reveal useful information in an FTO search. Once patents have been shortlisted, a backward and forward citation search must be conducted to ensure comprehensive coverage.
Attention must be paid to terms and keywords that do not match the initial search keyword sets but occur prominently in similar patents. these diversified keywords must be noted and included in further searches.
FTO search must be performed in the jurisdiction that the client intends to sell. When covering the jurisdiction, all possible channels must be explored to achieve optimum search results.

Conclusion

As seen from the above discussion, FTO searches are a precautionary tool that helps in risk minimization when inventing a product. This type of risk coverage is beneficial and desired by any product regardless of complexity. A quality FTO search report will be wide-ranging, detailed, and serve as a guideline for the future path of the product journey.

Since FTO searches rely heavily on legal aspects, they must be outsourced to a reputed firm with the means to conduct an extensive search within a short span of time. Choosing the right firm for the job is the first step towards expecting a fruitful search. So, spend time evaluating a firm’s ability and experience in FTO searches before hiring.

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