Everything you wanted to know about Freedom To Operate search

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. 

 

  1. 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:

 

  • Jurisdiction Coverage:

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. 

 

  • Date restriction: 

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. 

 

  • Citation search:

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.

 

  • Similarity Search: 

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.

 

  • Report the findings:  

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. 

 

Legal Status:

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. 

 

Latest claims:

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. 

 

Conclusion:

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. 

Are you looking for a partner to take care of your Intellectual Property needs? The team at ResearchWire is capable of handling any type of IP issue that your company might be facing. We are experienced at building custom solutions for your specific intellectual property needs.

Get in touch with us to understand how we can help you. 

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How to leverage the full potential of Google Patent Search

There has been a tremendous improvement in patent searching in the past decade. The objective behind searching for patents is to find prior art for an existing patent or for an invention for which a patent application is yet to be filed. Earlier, searchers and inventors used to manually search, spending hundreds of hours to find invention(s) similar to their idea. 

 

A quick way to search for patents is using Google Patent Search. The world’s most popular search engine does more than just crawl websites to send you their search results. Google’s sister search engine Google Patent (Database from IFI Claims) can not only search scholarly literature, but it also has the ability to search a huge repository of non-patent literature too- software, applications, manuscripts, and published articles. Google Scholar lets you search government databases too, thus increasing the reach of the patent search. 

 

What is Google Patent Search?

It is a search engine powered by Google which indexes patents and patent applications. Google Patents indexes 87 million patents and patent applications, with full text from more than 17 patent offices around the world. Launched on December 14, 2006, it uses the same technology as Google Books. Google Patents includes text-searchable patents dating back as far as the 1790s. 

 

Advantages of Google Patents:

One of the biggest advantages of Google Patent Search is that it is free. Although there are a number of free patent databases such as Espacenet, PQAI, Lens.org, Patentscope by WIPO, and more, none of them matches Google’s in terms of user-friendliness. There is a lot of content to navigate for the average searcher, and the experience on these sites while browsing, is important, otherwise, it can be too difficult to get the work done. 

There are many paid databases too, but a solo inventor might not be able to cough up the costs to get the license for them. Google Patents has a much better interface than all of these paid databases. You will also be able to get the results faster, they are provided in an easy-to-share PDF format, and the information is presented in a digestible format. 

  • It understands results with PDF, image and citations
  • Its relevancy ranking makes quick searches a reality
  • The results can also be filtered by date
  • Proximity Operators can be leveraged to improve the score if the documents have expressions near one another
  • Keyword and class-based search is possible  in the patent documents
  • Co-operative Patent Classification (CPC) code searching is easier
  • Searching on Google Patents is similar to searching anything on Google
  • You can get the most relevant results for your search query.
  • It is possible to find prior arts 
  • Provides similar documents/patents to the subject patent

 

How to use Google Patent Search?

Quick Search:

If you want to conduct a quick search, all you need to do is enter the term in the search field box. The search term can be a set of unstructured words, a large block of text relating to the invention or keywords pertaining to the technology. 

 

The searcher can also enter the following to get information about related patents:

  • Application number
  • Exact phrases with double quotes
  • CPC code 
  • Country code
  • Language
  • Publication number
  • Search for the inventor or assignee

For example, we have entered the search term as ‘medical equipment,’ and we are shown a list of patents that are in the medical equipment field. You will be able to see a number of options on the left side using which you can further filter the search results. The results are sorted for relevance, you can use other sorting options such as newest or oldest. The searcher can navigate through the result pages to find relevant patents. 

 

Importance of Boolean Operators in Google Patent Search:

To fine-tune one’s queries, searchers should use boolean operators and special characters. One of the best ways to leverage Google Patent Search is to understand how it interprets search requests. Here is how you can use it to its full extent. 

 

  • Keyword search rules:
  • The keywords that you use must be exact and specific
  • Be aware of the right keyword order in which you need to input your search query. The search term medical equipment is going to fetch you more relevant results relating to medical equipment than ‘equipment medical.’ 
  • The keyword searches are not case-sensitive. 

 

  • The AND Assumption:

If you type the keyword medical equipment, Google Patent Search is always going to assume it to be medical and equipment. Therefore, it will search for patents that contain the words medical and equipment. 

To search for a particular term, add a ‘+’ (plus) sign in between the words in the query.

 

  • NOT Command:

If you want to find patents without a certain search term, then you need to use the ‘-’ (minus) sign in front of the word in the query. The ‘-’ sign indicates that the searcher doesn’t want results of patents that contain that term. 

Make sure that there is no space between the minus symbol and the word. 

Laptop-touchscreen

 

When searching for patents related to laptops, if you don’t want anything that pertains to touchscreen technology, this is how you should input your query. For the above search, you will not get patents that talk about touchscreen.

 

  • While searching for a specific phrase:

When searching for an exact phrase, you can use quotation marks around the keywords. For example, if the searcher inputs:

“Contract Lifecycle Management”

Google Patents will only search for patents that will contain the entire phrase “contract lifecycle management.” 

Searchers can include more than one quoted string in a query. The implied AND works not only on individual words but also on quoted phrases. 

 

  • The OR Command:

When the searcher wants to search for one word or the other, they should enter OR (in capitals) between the keywords. Any or all the search terms separated by the OR should appear in the record. 

Chip OR Charger

In the above scenario, Google Patents will search for patents containing either the word chip or the word charger. 

 

Google Patents Advanced Search:

On the Google Patents interface, you can get the advanced search option by clicking the link ‘patents.google.com/advanced.’ It has more search fields that will help you search for the desired patent applications. Let’s see what these fields are and how they can be used for different types of searches.

 

Search Terms: Use the space to enter all the relevant keywords.

Before priority/publication/filing: In this search field, you can enter the priority date, date of publication or filing date of any patent. By entering the relevant details, you will be able to search for documents that are published, filed or have a priority date before a particular date. This feature can also be used for invalidity searches where the intent is to find out documents that have been published before a particular date. 

After priority/publication/filing: Using this search field, you can search patent documents that are published, filed or have a priority date after a particular date. 

Assignee: In this search field, you can search for patents that have been filed by a particular company or person. It is possible to track the patent filing activities of that person/company using this field.

Patent Office: If you want to search for patents from a particular jurisdiction, this is the field that you need to use. You can search patent documents from more than 23 jurisdictions around the globe using this search field. 

Inventor: With this, you can search for patents filed by a particular inventor and can also track their patent filing activities. 

Filing status: You can search for the status of specified patent applications.

Patent Type: You can do a patent search for design or utility patents here.

CPC: Search for patent documents based on a particular CPC.

Citing Patent: It allows you to search for patent documents for which only one particular document was cited during the examination.

Languages: You can search for patent documents in 14 languages. 

With more and more filters added to your patent search, you will be able to get more accurate results. 

For the same search term, we have added the patent office as the US and the type of patent as design, the number of search results has dwindled down to 2,884. Earlier, it was 134,000+ results. 

Source: Google Patent Search

It is best advised to use relevant parameters to get the most relevant results. 

 

Limitations of Google Patents Search:

Since the patent database of Google is not updated regularly, you might not be able to find the latest data, and it may only have the first version of each patent. Also, since this is a free portal, Google does not take responsibility for the information that is presented in its search results. Therefore, you need to check for the veracity of the information from the respective patent offices or use a professional to confirm the same. This might not be the case with paid databases as they will verify the claims made here. 

For those who are beginning, Google Patent Search is a wonderful tool, but if you are looking for a comprehensive set of results, then it is advised to take the services of a professional. There are some inventions that are so complex, and are not easy for inventors to search nor would they have the time to pore through the vast literature in a reasonable period of time without professional help. 

 

Wrapping up:

If you are looking to get a basic idea related to your invention, then Google Patent Search should be your go-to tool. As we have mentioned above, it does come with a few limitations. When the purpose of your search is not critical, you needn’t think twice about using it. Let’s say you spend hundreds of hours poring through a large amount of patent literature, you are either doing it wrong or you’ve struck gold in terms of an invention. 

Are you looking for a partner for all your Intellectual Property related needs?

The team at ResearchWire is capable of handling any type of IP issue. We are experienced at building custom solutions for your specific intellectual property needs. 

CONNECT WITH US

 

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