With global innovation on the rise companies all over the world are rushing to create and launch new products. But, when it comes to launch of their products, are they taking into account the infringement factors? It can damage a company’s cash flow if their new product infringes on any patents in the country where they want to market it. To combat such a threat, we recommend conducting a thorough Freedom to Operate (FTO) search, before launching a new product into the market. This search can help determine whether a product infringes on the patent of another company or individual, saving a company or individual from facing a lawsuit.
Freedom to operate or an FTO search is known by a variety of names “Clearance search,” “right to utilize search,” and “freedom to practice search”. An FTO search is used to see if a company’s product or procedure infringes on the claims of an enforceable patent or pending patent application in geographies of interest. Specifically, whether or not a company is authorized to manufacture, use, or sell a product or service. The FTO search involves searching for active patents, current pending applications, and lapsed patents in the jurisdictions of interest to see if the technology may be used without fear of infringement or the requirement of licensing.
7 Best Freedom To Operate Search Strategies
- Document type restriction–Since only patent claims influence FTO, only active patents are searched for an FTO. The FTO search excludes non-patent literature. In some cases, to keep a broad approach pending published applications are also searched since they represent future hurdles for clearance when enforced/granted. However, the importance of lapsed patents cannot be ignored. Some jurisdictions may have the provision of restoration of patent. For example, in India, there is a provision to restore a patent that has lapsed (inactive/dead) due to non-payment of maintenance fees within 18 months of such a lapse.
- PCT application: Searching for PCT or foreign patent applications that could potentially enter target jurisdictions is judicious. When PCT applications are screened for a Freedom to Operate search, it is feasible that they will enter the regional/national phase within 31 months of the earliest priority date; therefore, application within these months should be considered.
- Geographic restriction– Patent rights are territorial. A technology that is protected in one market may not be protected in another. Commercialization in those markets does not require authorization in this case. Patents should typically be searched only in the markets where the entity intends to practice its product or process for an FTO search. If the entity is clear about using/developing the product or process in Europe or US markets, then the patent search should be limited to those countries.
- Date restriction– Ordinarily, a period of 20 years is used for patent searching for an FTO search. The date range can be expanded beyond 20 years by 2-5 years to account for patent term extensions granted to pharmaceuticals, veterinary goods, and medical devices in some jurisdictions.
- Part of the patent to be focused-The claims section in a patent document determines the scope of the patent protection. Any aspect of an invention not covered by the claims is not considered to be protected. Therefore, focus should be given to claimed features in any patent. It requires considerable experience in interpreting the claims of a patent document.
- For an FTO, a broad claim that covers the invention’s concept but not specific elements will be considered relevant.
- The FTO is negated by a claim that has elements A+B+C and the invention is A+B+C+D+E.
- Legal status of a patent or patent application: The status of a patent or patent application may be: filed, granted, withdrawn, denied, reissued re-examined, or expired. Expired, rejected, withdrawn or revoked applications or patent document serve as potential clearing documents. As a result, priority should be given to active patents and applications when searching.
- Additional considerations– All relevant patent documents need to be found for an FTO search, and missing even a single relevant document can jeopardize the clearance opinion. It is vital to keep track of the latest legal status of relevant patents and pending patent applications on a regular basis in order to alert for any changes in the FTO’s status.
Performing FTO searches entails a lot of things at stake, which is why it is critical to follow above mentioned 7 Best Freedom To Operate Search Strategies to derive the best outcome. As every factor is interconnected to another factor, therefore ensuring quality at each step is essential. At Wissen Research our searching team conducts quality checks at regular intervals while simultaneously keeping in mind about the key aspects of the search. Wissen Research’s Freedom to Operate searches are designed to help clients in identifying potential roadblocks. Click here to know more about this service.