Freedom to Operate (FTO) – an introduction:
Freedom to operate search is an imperative due diligence step to be performed for any organization prior to commercializing a newly developed product or process. Freedom to operate searches help identify any potential infringement on the intellectual property (IP) rights of another party.
A Freedom to Operate (FTO) analysis involves a search of patent literature for issued or pending patents and obtaining a legal opinion on whether or not a product, process or service may be considered to be infringing existing patent(s) owned by others. Freedom to Operate Search, also known as Clearance Search, Infringement search or Right to Use.
Freedom to Operate is the ability to make/use/sell/otherwise commercially exploit a technology without the risk of being sued for infringing someone else’s patent. Hence, the search should be carried out before manufacturing, selling, marketing or importing the product. The purpose of searching for FTO is to find any published patent applications or granted patents that include claims covering a particular product or process.
Importance of Freedom to Operate (FTO) search/study:
A carefully thought-through product commercialization strategy requires an early assessment of patent rights. A freedom to operate search and analysis will help develop clarity in both technical and legal aspects of product development.
- Freedom to Operate study helps in ensuring a company/individual is free from any threat of infringement of third party rights.
- The study helps in making informed business decisions such as redesigning the product, identifying the patents for licensing, whether to import or export a product, changing the market for the products, etc.
- Also helps in forecasting future market developments to minimize the risks.
When to conduct a Freedom to Operate (FTO) search?
With significant patent filing taking place across several industries, it is worth conducting Freedom to Operate searches at multiple stages of the product/process development lifecycle. Freedom to Operate is usually conducted in the following scenarios:
- Early stages – Freedom to Operate searches can be conducted in the early research stage of product development to avoid infringements by modifying inventions to “design around” existing patents during the R&D process. By identifying key patents early on, it may be possible to find new ways to design around the claims of the patents that present the highest risk of infringement.
- Late stages – General practice is to conduct Freedom to Operate searches before the commercialization or launch of the product. If any blocking patents are identified at this stage, the products can be subjected to design changes (redesigned) before the product rollout or evaluate licensing opportunities to commercialize the product in specific markets
Getting a Freedom to Operate opinion will open up avenues for licensing, designing around patented features, or getting the go-ahead to commercialize the product or technology.
