This article will explore the concept of freedom to operate searching as well as going over some tips on how to use PatSnap in the FTO process.
Firstly, let's understand what an FTO Search actually is:
Remember 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?
It is considered by different people that FTO searches are appropriate at different times in your process.
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.
On the other hand, if you wait ‘til 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.
With today’s software however, it is reasonable to perform FTO searches throughout your process, ensuring you are thoroughly vigilant, and not just dipping into awareness now and again.
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:
- A patent might not have been protected globally – and if it is, patents are not necessarily the same in each jurisdiction
- Just because patents have been applied for in a variety of different countries, doesn’t mean they have been successfully protected
- Patents that were granted protection may not have been maintained, and therefore could have lapsed or expired early.
- Patents issued in different places may 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.
Remember, FTO searches only involve patents.
Patentability searches are a different matter. Just because you have freedom to operate in an area doesn’t also 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 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.
That said, I have heard of patents that have nearly been thwarted because ideas have been comically mentioned in comic book strips 20 years previously. You can actually see a prime example of this in THIS patent, which actually cites an edition of the British comic book “The Beano” on it’s 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:
So that's what an FTO search is, and what the difference between an FTO search and a patentability search is.