A recent conversation with one of our clients prompted us to reinforce our belief that early-stage freedom to operate (FTO) searches are business critical. Our client, a corporate R&D organization, informed us of a situation in which one of their teams spent significant time working on product development. Just as when they were getting ready to develop their marketing / commercialization strategy they uncovered a key patent that potentially blocked / delayed their product launch.
In a typical R&D lifecycle process of an organization, due diligence is conducted on proposed projects / innovations presented by several teams. Following this, a few projects are selected that meet the business needs. Such projects typically have a long lifespan of several months to years with hopes of a successful product launch in desired geographies. It is possible some R&D proposals are premised on the assumption that their inventions qualify for patentability at the outset of the due diligence process. Researchers tend to believe that a freedom to operate (FTO) study is conducted when a product has commercial potential.
SciTech Patent Art advises R&D organizations to conduct an early-stage freedom to operate search in order to clarify these beliefs. An early-stage freedom to operate search provides benefits such as –
- Identify key players and patent density in the technical domain.
- Identify patents similar to or closely related to the proposed inventions, thus providing researchers with a time advantage for designing around.
- Mitigate risks of infringing the patents of others.
- Getting into licensing or cross licensing discussions with potential partners who own some of the features of the invention.
By conducting an early-stage freedom to operate, a strategic commercialization path could be charted out saving significant time, effort and resources. SciTech Patent Art highly recommends conducting a freedom to operate search early in the process to make informed decisions.
SciTech Patent Art has developed a systematic approach to conducting early-stage freedom to operate studies and has been serving many clients over the years.
Key elements of a Freedom to Operate (FTO) study:
Freedom to Operate Search and Analysis is a complex process as it includes several key elements that need to be considered:
- Geographical limitations: Since intellectual property rights are specific to different jurisdictions, a “freedom to operate” should relate to particular geography/countries/regions where the product is being planned to launch/commercialize. Additionally, PCT applications for the last 30 months should be considered for the search.
- Time frame: As the patent rights are valid for 20 or 25 years in certain circumstances , the “freedom to operate” study should consider active patents filed in last 20 or 25 years.
- Claim-based analysis: Claims are the most important part of a patent document. Claims define the boundary of the patent. and therefore, what is sought to be protected. Hence, for Freedom to Operate search and analysis are primarily based on the patent claims only.
- Product features/components: Freedom to Operate studies require a separate search on each component of the product/process. Technology/product/device/process may have many independent aspects that need to be searched alone or in combination.
- Patent Legal Status: Patents that are in force/active should be considered for the Freedom to Operate study. Expired/lapsed/withdrawn patents need to be excluded from the study.
Our Methodology for a Freedom to Operate Search:
An effective Freedom to Operate study is conducted by collecting and analyzing information during the initiation of the study. The quality of the information gathered plays an important role in making the study effective. SciTech Patent Art has been conducting Freedom to Operate searches for over two decades and has developed a Standard Operating Procedure (SOP), including unique approaches that often result in identifying good prior-art and potential blocking patents.
