Patenting your invention does not guarantee the market use of the invention. Patents are a form of Intellectual Property Rights given to an inventor for a particular period, to prevent the use or sale of the invention without permission by any other person within the jurisdiction applicable to the patent.
Patents are valuable only when they can be used freely on a large scale in the market. With the number of patents significantly increasing, it is of utmost importance to make sure that your invention or product or technology does not infringe upon any other existing patents. Freedom to operate (FTO) search reduces this high risk of infringing existing patents.
Freedom to Operate Search
FTO search is a proactive measure to ensure that it is safe to commercialize your product/technology without infringing on any other existing valid IPR.
FTO or patent clearance is an extensive search that will check all valid, and pending patent records to make sure your product does not infringe any active claims in jurisdictions where you seek FTO.
When to Perform FTO?
A firm launching a new product with specialized features can opt for the freedom to operate search to check if it infringes on any existing products in the market. FTO search will be of great use when a company plans on establishing its product in the international market.
FTO comes in handy when a firm needs to improve on the existing design of a product. It is always better to perform market research through the freedom to operate search. This search will help the companies to arrive at new innovative features where they are unlikely to be sued for patent infringement.
Ideas gain form during the initial product development stage. This stage is when an FTO can be done. Hence, your design will be flexible to changes and can be easily modified to prevent infringement of existing patents.
When the product is rare, unique, or innovative, and the company expects that there is a less than 50% chance for the product to infringe any other patent, then FTO can be performed for confirmation.
Tips for a successful Freedom to Operate Search:
Structured Search
An FTO search involves screening several documents to identify any relevant claim similar to your product. Hence, searching through appropriate databases with well-defined boundaries can make the search easy. An in-depth reading of the claims section of the relevant patent document will help in identifying if the patent is relevant to the search or not. This structured approach of shortlisting patents should be followed to avoid any chaos during the search.
The 3C Approach
3C refers to Clarity, Communication, and Confirmation. This approach can identify the fundamental objectives of the search and help in framing relevant search strategies.
Searching for infringement of individual features of the product can yield a large amount of data. It is ideal to devise the search terms by combining the most relevant and relatively relevant product features to produce quality search results.
Right Interpretation of Claims
The quality of an FTO search depends upon how well the searcher can interpret the claims in a patent document. Each word in the patents that appear on search is significant. Hence, adequate knowledge of IP-related terminologies is essential for an effective FTO search. One can always hire patent search experts with reasonable freedom to operate opinion costs.
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Presentation of FTO Analysis
Piles of data will get accumulated during the search process. Patent ranking methods can be used to place the most relevant patents first, followed by the least relevant ones. The analysis can be presented in the relevancy matrix and reference matrix for a better understanding of the Freedom to Operate Search.
Alternatives Available on Poor FTO Search Result
Find New Market for the Invention
Mostly, patents given by a country are valid within its jurisdiction only. If there is no Freedom to operate within a country, it is wise to opt to market your product in different countries where the invention is unknown or remains unprotected.
Modify the Invention
This strategy is a smart option available when the freedom to operate search is done during the initial stages of product development itself. One can always sidestep specific claims made by an already patented technology. Companies can work on developing an innovative product that does not infringe any existing patents.
Consider Patent Licensing an Option
Licensing of the patented technology can help one from any potential patent infringement suits. One can consider cross-licensing between different companies to use the patent legally.
Chances of Patent Expiry
Patents are generally valid for 20 years and all patents are not appropriately maintained. Most of them lapse well before the expiry date due to improper patent maintenance. One can always have a close watch on the relevant patents and make use of such opportunities.
Freedom to operate search is a valuable option for companies to build products and designs. Particularly, FTO opinion helps to market it commercially without any infringement cases. It is always prudent to perform a freedom-to-operate patent search by investing a few days rather than spending years on infringement suits of Intellectual Property Rights.
