This article will explore the concept of a Freedom To Operate search, as well as going over some tips on how to use PatSnap in the FTO analysis process.
The aim of an FTO search is to find out if there’s anyone that has protected, and has active protection on the idea that we have. Thus, are we allowed to produce or sell or import that invention?
The official WIPO definition of an FTO analysis is:
A Freedom to Operate (FTO) analysis invariably begins by searching patent literature for issued or pending patents, and obtaining a legal opinion as to whether a product, process or service may be considered to infringe any patent(s) owned by others.
We will touch on idea generation a little here, but FTO searches are about understanding if you are able to produce/sell/import a specific invention you have in mind, not necessarily giving you ideas on what is free to create.
So, when should we do an FTO Search?
There are two different schools of thought regarding when FTO searches are appropriate during a development process:
- Early search: If you conduct a search early in your innovation process, your invention might evolve and change so much during development that it no longer matches the original searches you performed.
- Late search: On the other hand, if you wait until the later stages of development and you find that you are infringing, it might be too late for you to alter the invention enough to no longer encroach on a patent.
What happens when you do find a patent?
And when you find a patent that seems to match your idea, whenever that might occur during your process, remember there are many reasons that you might still be able to produce that invention:
- Sell your product elsewhere. The patented technology that blocks your freedom to operate might be territorial, it might not have been protected globally – and if it is, patents are not necessarily the same in each jurisdiction, they might have variations in their claims, perhaps broader or narrower, so it is important to read each patent carefully, no matter how similar they seem at first. Additionally, just because patents have been applied for in a variety of different countries, doesn’t mean they have been successfully protected.
- Look for expired patents. Patents that were granted protection may not have been maintained, and therefore could have lapsed or expired early. Maintenance fees may go unpaid if a patent is deemed unworthy of keeping, or if the owner hits financial hard times. In these cases, the patent will lapse early.
- Invent-around. This is a process in which you adjust your invention to avoid infringement. This is a great option if the patent in question has specific claims and you can find a way to sidestep those claims. You are likely to be able to use the idea of a patent with narrow claims, but create a sufficiently different invention to get your patent.
- License or buy patents. FTO searches can reveal who your potential licensors are, licensing a patent means the original holder owns it, but they give permission for you use their patent. This might be the most obvious and easiest way to circumnavigate a freedom to operate infringement.
Freedom to Operate vs Patentability
While FTO searches only involve patents, Patentability searches are a different matter. Just because you have freedom to operate in an area, it doesn’t necessarily mean you can patent there. As we should all know, to patent an invention, it has to be entirely novel. No-one can have publicly shared that idea ever before, anywhere. This means that if you’re looking at patentability, you should recognize that aside from patents, any public facing information could hinder your plans to patent a particular item. You might look at websites, scientific journals, industry publications, and general media.
There have been cases in which patent applications have nearly been rejected because the submitted claims contained ideas that have been comically mentioned in pop culture in the past. The following, is a prime example of this:
This patent, cites an edition of the British comic book “The Beano” on its list of citations. (The patent actually ended up getting granted, so it looks like the applicant successfully argued this one!)
Another interesting case of some prior art is in another UK patent, where we have an applicant referencing a James Bond movie:
Remember, It is good practice to perform an FTO search throughout different times of the development process. Try to Identify the competitive features of your technology, and search for that. If you don’t have FTO, you can Invent-around, or try to reach a licensing deal with the current patent owner. And finally, don't forget that having FTO is not the same as Patentability.