What is Freedom To Operate Search (FTO Search)? Do you have Clearance to release you product?
Singhwal assists you in giving you a clearance to release any product. A Freedom to Operate Search is conducted to give an overview on the patent environment with respect to your product, to ensure that the release of your product will not cause any form of infringement. We have conducted several FTO searches and provided different strategies and modifications to ensure non-infringement of patents. We have worked in several technology domains and this includes mechanical, chemical, electrical, electronics, telecommunication, civil, metallurgy, computer science, IT, Software, Aeronautical, etc.
What is a Freedom To Operate Search (FTO Search)?
FTO searches which are also sometimes referred to as ‘clearance searches’ are mostly conducted in cases where a release of product is aimed for. This type of search primarily identifies potential patent barriers to the commercialization of products or technologies; and is typically conducted as an IP due diligence effort to prevent potential infringement. This search assists a company in understanding whether a proposed product or invention does not violate any active patent. The evidence may also be used to ensure that one must be aware of possible infringement to take appropriate business actions. The clearance search is very useful in uncovering certain applications that are in the patent pending status, which if eventually are granted patent rights, might be potentially infringed by the solution or the product that is currently in question.
Freedom to operate (FTO) is a search/ analysis of valid patent and patent publications so as to execute the process or product or technology of interest without infringing those patents in particular geography. Hence, it is a precautionary step taken before potential infringement by launch/ commercialisation of product or technology of interest in specific market.
FTO search assists that the product or technology can be manufactured, used, sold, exported and offered for sale without infringing third party’s valid patent(s) related to the specific technology. In nutshell, FTO search identifies the potential patent barrier to the commercialisation of the product and gives us the direction to proceed further. One has to consider various aspects of FTO search such as at what stage of the product development the FTO search is being conducted, purpose of the FTO search, what of kind of search/ analysis is required before conducting FTO search.
How to conduct FTO search?
FTO search is geography specific. Hence, first identify the geography where the product of interest is manufactured and commercialised.
Formulate keywords and patent classification which are clearly define the product, process or technology of our interest. It is also recommended to search using name of the potential competitor.
It is advisable to conduct FTO search using the country specific patent databases maintained by the respective patent office. Additionally, search using PATENTSCOPE database for PCT/ international patent applications is recommended. Also, one can use paid databases which are easy for searching and more search options are available to retrieve the relevant patent document. At Singhwal, our experts have rich experience in patent search using free databases and different paid databases.
When to conduct FTO search
FTO search can be conducted at any stages of product development/ life cycle in thereby to assess the direction of product development and its commercialisation. Early stage of FTO search helps scientist to develop non-infringing product, process or technology with respect to the relevant patent and patent applications from third parties. This early stage FTO search helps an individual or a company to invest their money in right product, process or technology which is non-infringing third party’s patent. In addition to financial implication, the early stage FTO also save lot of time in the product development as the scientist aware of scope of third parties patent/patent applications and hence design around or invent non-infringing product at the initial stage of development itself.
Alternatively, one can conduct FTO search right before launching/ commercialising their product, process or technology in order to avoid potential patent litigation which involves high cost.
Important Aspects of a Clearance Search
An FTO search is restricted to only active patents, and one must also make sure that a granted patent is still active and has not lapsed. In other words, if the maintenance fee is not paid, a patent is considered lapsed and is not valid/alive anymore. Non-patent literature, scientific journals, etc. are not relevant in this search as they do not form potential threats to the release of any specific product. An FTO search in most cases is restricted to the claims of the patents and the claims are the enforceable section of the patent. The jurisdiction of interest is also a very important aspect to keep in mind while performing the search and conclusion. The time period from which the patents date back to are also very essential; in other words a time period of about 20 to 22 years from the date of the search is taken into consideration for the clearance search strategy
FTO search/ analysis is country specific. A single FTO does not serve the purpose for two or more countries. Because, patent is geographic in nature and different countries have patent law with different scope/ provision.
To have better FTO analysis/ report, the purpose of the FTO search should be very clear. It may be conducted for launch of the product or development of the product/ technology or looking for potential partner for development or licensing/ cross licensing of technology etc.
When conducting an FTO search, we at Singhwal concentrate on every product feature or element and compare it with respect to the available patent references. Each of these features or elements are assessed separately and then combined to understand the relevancy of the product to the available patent literature. Mostly a clearance search is conducted to give yourself a warranty/assurance regarding your product of interest being safe from infringement.
FTO search is not to be considered as absolute certainty. Because, as the time progress new patent applications being filed by third parties, pending patent application may be abandoned/ withdrawn, new patents getting granted and already granted patent will expire. Therefore, one should not consider that once the FTO analysis is done the status does not remain same over the period of time. Adapting certain practices during FTO analysis, as discussed above, helps the company to minimize the risk associated with potential infringement. There is a possibility in the US that a patent can be granted without publication if the applicant agrees not to file the patent for the same invention in any other countries. Hence, one must periodically check/ monitor the patent application in order to mitigate the risk.
Another important point to note is that the results found for a clearance search would provide a thorough conclusion for granted patents only. Published patents and other international PCT applications which are in the process of entering national phase cannot be judged. This is because in case of published patents, the outcome of the patent is not known, and in case of PCT applications, the designated countries are not known. For this reason a conclusion based on these prior arts will be very subjective and it will also involve a higher scope of analysis, expertise and strategy. Many applications which are still not published will not come to our notice and therefore in such cases, it is advisable to conduct a preliminary search every 6 months.
In the FTO search, it is not required to include/ search expired patent and any other non patent literatures such as journal, presentation, etc. However, these may serve as potential clearance documents in case our product, process or technology is described over there and no granted patent or pending application covering it. Additionally, these non-patent literatures are useful in determining white space of the technology which provides an opportunity to work on the white space available and to protect the same.
If FTO conducted at early stage of R&D then the whitespace analysis can provide patentable opportunity. Once the patent application filed for the white space of the technology then this opportunity can be used for fund raising or potential collaboration with the competitor.
Under certain circumstances, the third party’s patent is highly relevant and would be infringed by our product or technology. In this scenario, exploring invalidity option will help us to launch our product or technology earlier.
Other implications of FTO Search
In scenarios where an FTO search is conducted at the early stages of Research & Development, there is a chance that some aspects of the search may determine patentability of the invention/product as well. If there are signs of patentability, it is still advisable to go for a patentability search to get a wholesome understanding of whether the invention/product is patentable. In such cases where a clearance search leads into a patentable invention/product, works out as an advantage to the concerned company/individual.
Advantages of FTO:
FTO search helps R&D to find out the third parties patent which are not so relevant for commercialisation however may be infringed if not design around the claim(s). Hence, FTO search assists R&D to design around the patent thereby avoiding potential anticipated patent infringement.
FTO search conducted at the initial stage of product development guides individual or company on how to proceed further in view of the third parties granted patent and pending patent applications. This helps to avoid unnecessary financial and time investments.
FTO search results in complete list of patent and patent applications. Hence, one can completely understand the relevant technology and its scope and can easily identify the white space available in the technology. This white space provides a new opportunity to the individual or company to work on.
The identified white space in view of the FTO search in the relevant technology provides an opportunity to secure a patent on that. The white space may provide new opportunity or direction to work. This helps the company to raise investment, collaboration with competitor and to develop a better product.
FTO search is very useful in case of potential licensing, cross- licensing, merger or acquisitions. If third party’s valid patent is highly relevant and without infringing that patent it is difficult to market our product then approaching the third party for licensing the particular patent in order to commercialise our product is an appropriate strategy. Alternatively, in view of third party’s patent covering a relevant product and that product cannot be marketed without infringing our valid patent then we can approach that party for cross licensing of the patents.
Merger and/ or acquisition is an another strategy in case of third party holding a valid relevant patent or patent application which is potential barrier to our product or technology thereby reducing the risk of infringement
At Singhwal, our team of patent attorneys and technical experts, across globe, have rich experience in FTO search and analysis. Our team strategically helps our client in the FTO search in order to develop and commercialise their technology without any infringement risk. Also, we constantly monitor status of pending patent application, granted patent and new patent application and alert our clients thereby minimising the risk of potential patent infringement. Based on our rich experience, our patent experts strategically advice our client on how to proceed in case of pending patent application. Our experts also coordinate with third party in case of potential licensing and cross licensing of patent wherever required. We effectively work with R&D throughout the lifecycle of the product development to develop non-infringing process and/ or product thereby minimising risk associated with patent infringement during commercialisation of the product.