Also known as infringement analysis or clearance search, the objective of freedom to operate search is to check if any product or process utilised is infringing on a live patent’s claim. If there is no due diligence, the chances of infringing on someone’s intellectual property is high. An effective FTO search is what you need to do to stay safe from the dangers of litigation.
What is Freedom to Operate Search?
It is used to find out if there is the freedom to operate and invent in a particular jurisdiction from a legal view. If an FTO is found to be negative, then the entity aiming to operate the invention should not proceed to go ahead with the invention.
An FTO search is part of the due diligence that organizations should carry out before they apply for a patent. A patent clearance search is also conducted during various places in the innovation process so that there is a proper allocation of R&D resources. When you conduct a thorough FTO search, it demonstrates due diligence on your part if you were to be ever accused of IP infringement.
When should an FTO search be conducted?
It should be conducted as early in the product development cycle as possible. Doing so will help avoid unnecessary costs, reduce the allocation of wasted resources, show opportunities to license existing technology, save time, and mitigate the risk of litigation. A good FTO patent search can also enable the inventor an opportunity to develop a design ground early.
Questions to consider before an FTO search?
Here are some of the questions that you should ask to determine your FTO search strategy.
- Which stage of the innovation process are you in?
During the R&D process, you should have completed the FTO search a number of times. Depending on which stage of the innovation you are in, the way you approach the search will be different. Why? Because the claims in the potentially risky patent might change by the time you are ready to launch your product in the market.
2. What is the investment for your invention?
If there is a lot of money involved, you should be sure about your freedom to operate. Ensure that you conduct extensive searches. For technologies (read inventions) that will only give a modest ROI, your FTO search need not be intensive.
3. What is your risk tolerance?
If you do not have much idea about your freedom to operate, then you have to be tolerant of the risk associated. Even risk-tolerant organizations might not want the threat of an infringement suit hanging against their heads. You might want to invest in a thorough FTO search at multiple points during the product development phase.
4. Does your industry patent often?
There are some industries that are a lot more crowded with prior arts than others. If yours is an industry that creates patents often, then it is imperative that you conduct in-depth FTO searches. You can start by searching your direct competitor’s patents, industry-wide patent searches and utilize a search tool that has semantic and Boolean search capabilities.
5. Does litigation happen often in your industry?
Industries such as electrical equipment, biotech, electronics, consumers, telecommunication, will see a lot of patent infringement cases. If your product belongs to any of the industries mentioned above, then you need to protect yourself from infringement suits by conducting patent clearance searches.
6. Where will you operate?
The type of search strategy that you should use will depend on where you want to launch your product.
Best Practices for Conducting Effective FTO Searches:
FTO search is performed based on the jurisdiction where the inventor or company is likely to launch the products. It is necessary to consider and cover all the channels related to a particular jurisdiction. Otherwise, the searcher might miss important patents.
While performing an FTO search, date restriction is an important aspect. Usually, all the alive patents are considered. Some alive patents might fall outside the 20-year criteria, even if they are not from the below-mentioned industries. One more thing to keep in mind is the domain in which the search has been conducted. There are domains like veterinary, pharmaceuticals, food additives, medical devices, etc., where there is the concept of patent term extension.
The patent term extension cannot exceed five years. The aim is to offer an extension for the time period when the patent holder is waiting for regulatory approvals. Therefore, it’s pivotal to vary the date restriction based on the domain you are searching.
- Targeting important domain players:
There are important players who have a huge portfolio of patents in each domain. You should concentrate your searching efforts carefully to evaluate their updated portfolio. It is important that a searcher evaluate the portfolio of their company’s competitors and ensure that all-important patents owned by the competitors are being searched thoroughly.
The backward and forward citations of a patent are usually the closest results to that particular patent in the domain. After the analysis is done, it is considered a best practice to do the citation search of the shortlisted patents. It will help the searcher to identify patents that could have been missed during the FTO search. It could be missed because of factors such as missing classification, translation mistakes or a missing keyword.
Many databases provide you with a feature called the similarity search and it is crucial for FTO searching. This feature helps searchers identify close prior arts which might have been missed otherwise. Since each relevant patent has a huge significance with respect to FTO, we advise not to miss standard searching steps so that you can capture all the patents that disclose similar inventions.
- Patent Segregation to prioritize efforts:
Dividing the patents into different sets based on their claim length and legal status can help with effective searching and analysis.
Claim Length: Comprehensive claim analysis of the patent is required during FTO searches. The scope of the invention is defined by the length of the main independent claim. As a rule, the shorter claim length of the main independent claim, it has a broader coverage of the domain. There are many searching databases, which provide the main independent claim length as a feature.
Legal Status: It is also possible to divide the patent result as per the family legal status.
of the patent family. When you’re launching a product, only active and granted patents can pose obstacles. Therefore, these patents need to be carefully searched.
- Keywords and Classifications:
By searching the patents and products in the domain, it is possible to identify the keywords and classifications. Observe the diversified keywords that are used to disclose the same invention. You also need to track classifications throughout the search process as it’ll help you gain insights as to which class includes most of the patents of interest. Iterate the old strings with the help of updated keywords so that no obvious buttons are missed while reporting the FTO search.
The findings need to be put in an easy-to-understand manner. Ensure that there are no communication gaps by structuring the findings in the report properly.
Categorizing the results:
The results should be categorized to define different sets of results in an easy way. At ResearchWire, we use the following labels- High, Medium and Low Risk. The claims of the ‘Relevant’ patents can be quite broad and the product could appear to infringe the protected subject matter of these patents. The ‘Potentially relevant’ and the ‘Related’ categories are patents whose claims might include a few restrictive features. The product may or may not be infringing on the claims.
Report the patents in the decreasing order:
For FTO searches, it is best to report the patents in the decreasing order of their risk level. It reduces the time taken by the client to check the results quickly.
The legal status is dynamic in nature as it gets updated regularly by the patent office. The update is based on factors such as patent life, the status of the maintenance fee payment, disputes, etc. While preparing the reports, make sure that you check the legal status of all the relevant patents.
Since the FTO patent search is a claim-oriented search, the latest claims and pending applications are considered for analysis. To ensure the best quality, each claim of all the active and granted patents should be ratified with the National patent office websites.
There is immense potential to calculate the chances of infringement in advance through FTO analysis. A correct FTO analysis can not only measure the probability of avoiding patent infringement litigation, but can also provide you with new business opportunities by showing what is available in the technology that you’ve chosen. It also minimizes the risks of infringement of the rights of third parties.
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