Before launching a new product on the market, you need to make sure that it is not an infringement of other existing items. This is the aim of a Freedom to Operate (FTO) search.
The aim of a Freedom to Operate (FTO) search is to ascertain whether a product can be marketed without any risk of infringing patents or other intellectual property rights held by third parties.
This means avoiding having to withdraw a product from sale or paying damages if the product is an infringement, even unintentionally. This is why these searches are often conducted even before the product is fully defined, with the help of specialized institutes.
The scope of an FTO search can vary greatly depending on the complexity of the product, the markets to be covered and the necessary level of safety. One- or two-day searches by “patent information” analysts can be enough if the product is simple, comprises only one innovative aspect and is sold only in Switzerland and a few other countries.
However, a microprocessor or smartphone might include thousands of innovations which are potentially patented and sold in a large number of countries. In these cases, search efforts are considerable, particularly when absolute safety is required.
It is important to differentiate FTO searches from other patent searches carried out to verify whether a product is eligible to patent. A traditional search report (for example, the report prepared by patent offices and sometimes attached as an appendix to published patents) does not really help reach a conclusion about freedom to operate.
The different steps
A preliminary study may be conducted at the start of product development to immediately dismiss solutions which present excessive risks.
This step is necessarily incomplete, since not all the product characteristics are generally known at this point. It is therefore necessary to complete this step during development in order to check whether the various technological choices create any new risks.
The scope of the search should be discussed upstream. Complete security is not possible. It is therefore important for a company carrying out an FTO search to fully understand what is at stake.
In the case of a product of strategic importance for the company or the conducting of an FTO search after raising funds, it is often wise to call on a team made up of patent information analysts, Swiss patent advisors and experts in European and American law, for example. More brief FTO searches may be sufficient when a residual risk is tolerable.
A freedom to operate assessment often reveals patent applications which have not yet resulted in a registered patent, meaning their scope is therefore uncertain. In that case, it may prove necessary to periodically monitor the progress of those applications to avoid any nasty surprises.
On discovery of a third-party patent which threatens a company's activities, it is possible to acquire a license, modify the product to circumvent the patent or have the patent revoked—for example, through an opposition procedure.
This last option can only be considered if the patent is not valid—for example, if it does not meet the novelty requirement or if the application procedure is flawed.
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