Freedom to Operate Search (FTO)
What is a freedom to operate search and opinion?
A freedom to operate (FTO) study is usually performed on a finalized product design before its release in order to determine if the product, or any of its components, would infringe on any enforceable patents. Even if the product being studied has been granted one or more patents in its own right, commercializing the actual product does not guarantee that other patents would not be infringed in the process of commercialization.
A patent right is only a right to exclude others from commercializing a patented product – it does not guarantee the patent owner a right to commercialize the patented product. This is because many patents are granted upon products that improve other patented products. To the extent the improvements incorporate, in whole, a patented claim held by a third party, a license may be required to commercialize the improvement.
When Is a Freedom to Operate Search Conducted?
Companies usually perform freedom to operate searches before a “rollout” of a product with the potentially infringing technology. These companies perform FTO searches to avoid the high cost of re-engineering, significant disruptions in their supply chains, and large amounts of unusable inventory getting locked up with brand/reputation and partnership relations at risk.
According to some theories, agile startups who can quickly re-design/pivot their tech upon patent infringement notice don’t necessarily need to spend too much time or money on FTOs. Damages don’t start for patent infringement until the infringer is on notice. Early-stage companies have less risk of patent damages for infringement if they ‘did not know’ of the patent infringement. If a company does not have many sales warranting a big recovery by a plaintiff in a patent infringement lawsuit, they may also have less risk for potential litigation (watch out for a competitor seeking an injunction, though). Additionally, if the company can rather inexpensively employ design changes around potentially infringing components without also losing a lot of money on infringing inventory and disrupting their client’s business and distribution channels, the company can minimize potential damages if they are eventually notified of infringement.
How is a freedom to operate search performed?
FTO searches are not concerned with the patent portfolio associated with the product being studied. Instead, the study evaluates the actual technology being made, used, sold, or otherwise distributed by a company on a component level. Unlike a patentability report that looks at the invention as a whole, FTO searches take a component-based approach. Each product component is evaluated to ensure your product does not infringe on any other enforceable patents. Accordingly, the study doesn’t just examine the product as a whole – but an independent analysis is performed on each component within the product (accelerometers, inductive sensors, magnetic sensors, spout design, RFID tags, etc.) to determine if any enforceable patents cover the components in question. If patents do cover the product or its components, licensing may be required.
However, if the studied product is comprised of components supplied by third parties (e.g., “off-the-shelf” components are purchased and used in the product), then the component level search may be skipped for such components. It will be assumed that the supplier of the components has sufficient patent rights to supply the components, or is under an indemnity agreement (i.e., an agreement that would require the supplier to defend and/or cover the costs of any patent litigation).
What if I am more concerned about the validity of my patents rather than the likelihood my product would infringe ON others?
If you are more concerned about the validity of your granted patents instead of whether your product would infringe on others, it may be best to consider a validity search. A validity search is a patent search performed to find prior art that can be used to show that the patent claims held by your company are anticipated or rendered obvious by the prior art. Patents can be contested for being ‘anticipated by’ or ‘rendered obvious by’ any publicly available technology or publication describing the same (“prior art”), which pre-dates your filing date. That’s not enough, however. Then, the prior art findings must then be presented to the PTAB (Patent Trials and Appeals Board) with a request for a review or re-examination. During this review, the patent owner may have an opportunity to defend their claims as patentable or modify them to circumvent the newly found prior art.
SecurING your innovation:
Are you a business owner or inventor looking to protect your idea or invention? At Founders Legal, we offer full-service patent search and patent services as well as other specialized areas of IP such as trademark, IP licensing, and trade secret protection. If you want the most comprehensive strategy for protecting your intellectual property, contact our team today!
Give us a call at +1-800-530-4983 or click here to schedule a free patent search consultation with a specialized patent attorney.
Yuri L. Eliezer, Esq.
Partner, Advanced Technology and Patents
Yuri heads the Intellectual Property practice group at Founders Legal. A practice he co-founded at the Atlanta Tech Village – the nation’s fourth largest incubator. Yuri was one of the few attorneys invited by the USPTO to provide technical training and industry insight at the Patent Examiner Technical Training Program (PETTP), where he shared insight into technology company decision points and challenges within the US Patent System. By the nominations of colleagues that have worked with him over the past several years, Yuri was selected to the 2021 and 2020 Super “Patent” Lawyer Lists, an award that is given to just 2.5% of attorneys.
Decarlo, Kean. Assignor Estoppel Post Minerva and Strategies for Finding Solutions. January 2022. PowerPoint Presentation.