FTO and Patents: Everything You Need to Know
Freedom to Operate (FTO) is, in essence, the freedom to commercialize your invention in a marketplace without the fear of infringing on a third party’s patent.
To determine whether your product has FTO you must first conduct an FTO Search.
FTO Searches go by a few different names, such as a patent infringement search, patent clearance, and infringement clearance. The main purpose of an FTO Search is to gauge the risk of patent infringement linked to a certain product.
Although these searches can be exhaustive, they are important; and it should also be mentioned that there can still be some risks involved even after a search shows no potential for patent infringement.
What is a Freedom to Operate Opinion?
FTO opinion is a legal opinion obtained in a given jurisdiction from a registered patent attorney that concludes that your invention does not infringe on a certain patent. This is a legal document that can be used as evidence of “best intention” against accusations of “willful infringement”.
Meaning, it is not enough to simply do the FTO search, but after the relevant patents have been identified, they should be carefully reviewed by a registered patent and legal opinion should be obtained. Remember, FTO opinion does not conclude one will not be sued – but it prepares the grounds for defence!
What is the Difference Between an FTO Search and a Patentability Search?
Patentability Searches focus on patent description usually overlook patent claims because their main focus is to figure out what is novel about the proposed invention. FTO searches focus on patent claims to compare inventions to claims and address questions of infringement.
How to Prevent Any FTO Risk
If you want to ensure that you have FTO, you will need to find any patents that are relevant to your invention. From there, you need to assess if your invention infringes on claims of these patents.
Here are two steps you can take to ensure that your FTO Search is as effective as possible while minimizing cost:
- When performing an FTO search, search only in country’s markets of interest – the places where you will sell, manufacture, conduct R&D activities. If you plan on selling the products in multiple countries, Focus on the ones that could lead to you being sued.
- Additionally, instead of searching across all the relevant fields and competitors, narrow down your search to these you believe present the most litigation threat – this will also reduce the costs of the FTO Search.
How Much Does an FTO Search Cost?
FTO search is divided into two steps: search and analysis (which can result in legal opinion). Always make sure to identify the costs per stage – while search includes working with large quantities of the prior art and essentially is quoted on a per-hour basis, the analysis stage is focused on analyzing particular patents and applications and can be evaluated in per-unit or per-hour prices – for example, single patent analysis take up to 10 or 20 hours or cost X dollars.
Only patents of interest should be brought to a legal opinion, where arguments from the analysis will be used in addition to the provision of relevant case law. Legal opinion is the priciest portion, as it requires work of seasoned legal professionals (patent attorneys).
So, the price is a function of search (amount of prior art), analysis (detailed review) and legal opinion (lawyer’s work). Overall, it can become quite expensive.
This is due to the high stakes involved. The price is usually determined by analyzing both the number of products that need FTO and the number of independent claims.
When Should You Do an FTO Search?
It is best to do an FTO Search when your business is releasing a new product that has innovative features. Even prior to development, you want to know where the pitfalls are and what features you should avoid or not infringe upon. The final design should be reviewed before releasing the product to the public, you will first want to know if your product will infringe on any already existing patents.
However, due to the length of the process and associated costs, doing an FTO Search doesn’t make sense for every product. In the end, FTO Searches are all about risk mitigation. If you would like to release your product with the peace of mind that you have it ready for future infringement allegations IF they will come, it may be worth the investment.
Using FTO Searches Strategically
FTO Searches are usually most valuable in the early development stages, this way, if there could be a possibility of infringing on a third party’s patent, you can make modifications to avoid that outcome.
Also, when you have analyzed similar patents to your invention early on, you could design around them or find small nuances in their claims that have yet to be taken full advantage of. With this strategy, the FTO Search provides additional value by discovering new, untapped ideas on top of reducing the possibility of facing an infringement suit later.
While it is impossible for an FTO Search to give an assurance that your invention won’t infringe on a third party’s patent, it is still essential to alleviate the chance. FTO Searches can also be used to strategically develop your product to change the path of development for an infringement to become avoidable and to identify non-claimed inventions.
What Levin Consulting Group Can Do
If you’re looking to conduct a Freedom to Operate (non-infringement) search or are looking to file a medical device patent, design patent, trademark or any other form of intellectual property, we are the experts to get in touch with. We understand your business context and offer patent services that are suitable for your needs. Our team works for you to reduce your legal risks and take the stress out of managing your intellectual property.
We invite you to get in touch with us if you have any questions about FTO and Patents. And if you are in need of other patent services, you can call us to talk about things like Patent Portfolio Management, Medical Device Patent, Intellectual Property Rights Due Diligence, and more.
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