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IP Strategy

6 Questions to Consider Before a Freedom to Operate Search

By February 1, 2021April 6th, 2021No Comments

A freedom to operate search is a type of patent search that assess the patent landscape for any protected technology that would keep you from using your invention freely. Otherwise, you may be committing IP infringement without knowing it. Freedom to operate searches are also known as right to use searches, patent clearance searches, or patent infringement risk assessments.

An FTO search is part of the due diligence organizations should complete before applying for a patent. Ideally, a patent clearance search is also conducted at earlier points in the innovation process to ensure IP and R&D resources are allocated efficiently and effectively. A thorough FTO search helps demonstrate due diligence in the event that your organization is accused of IP infringement.

What is Freedom to Operate?

Freedom to operate (FTO) is the ability to use your technology without infringing on another’s intellectual property. You can obtain freedom to operate by inventing a novel technology of your own, inventing around other entities’ patents, or licensing or purchasing the rights to the patent(s) your technology infringes on. It’s nearly, if not completely, impossible to obtain 100% confidence in your freedom to operate. Rather, FTO is a legal opinion that is derived from an analysis of a freedom to operate search’s results.

Determining Your FTO Search Strategy

It’s impossible to eliminate all chances of an infringement case. However, some situations warrant a more detailed freedom to operate search. To begin determining how thorough your FTO search strategy should be, ask these questions:

At what point of the innovation process are you in?
An FTO search should be completed multiple times during the research and development process. However, how you approach the search may be different, depending on how complete your invention is. For example, early in the process, you may not look at many patent applications, because the scope of their claims may be very different by the time they are patented and you’re ready to file your own patent application. How often and in-depth you examine patent applications as part of your FTO search also depends on how quickly your industry innovates and patents those new inventions.

How invested are you in the development of this technology?
In general, the larger the R&D investment, the more important it is to be confident in your freedom to operate. On the other hand, it’s important not to conduct your FTO search past the point of diminishing returns. For technologies with a smaller investment and lower potential ROI, your FTO search strategy does not need to be as comprehensive, as more in-depth searches require more resources.

How tolerant are you of risk?
Of course, if your business is tolerant of the risk of bringing a product to market with little knowledge of your freedom to operate, you won’t need an in-depth search. However, this strategy is rarely advisable, as the threat of an infringement suit without evidence of due diligence is not a situation even risk-tolerant organizations want to find themselves in. Companies that are exceptionally risk-averse will want to invest in a thorough FTO search at multiple points during the innovation process.

Is your industry patent-focused?
Some industries are more crowded with relevant prior art than others. If your industry patents often, an in-depth FTO search becomes more necessary. Specific strategies can help your search from becoming overwhelming, including:

Does litigation happen often in your industry?
Some industries, including consumer products, biotech, and electronics, are more likely to see litigation over patent infringement. If your organization operates in (or near) these markets, your patent clearance search should be more thorough to protect you from an IP infringement lawsuit.

Where do you want to operate?
Your FTO search strategy will differ, depending on where you want to operate and sell your invention. Depending on the type of product or process you’re interested in commercializing, you may be able to search only a few major patent offices, such as the USPTO and EPO. For greater confidence or a global product, you may need to expand your search.