Determining patentability and freedom to operate is essential to the ROI your organization will see from an invention. Conducting both patentability and FTO searches at strategic points during the innovation cycle help businesses minimize risk. Understanding whether or not a product or process can be protected and monetized allows resources to be allocated strategically. This also reduces the likelihood of litigation later.
What is patentability?
Patentability ensures your invention is patentable. This means it is novel, nonobvious, and useful, and therefore meets the criteria required for patent protection. This is why a patentability search is also referred to as a novelty search. A patentability search looks at all prior art to increase confidence in the novelty of an invention. In order to be novel, the invention cannot have been previously described in any meaningful way in any type of patent or nonpatent literature from any region.
Your patent examiner will conduct a patentability search after you apply for a patent. However, it would be a waste of both R&D and IP team resources to submit a patent application without an idea of whether or not your invention is novel. If your invention is, in fact, granted a patent, you now have the right to sue others who infringe on your protected invention. A patent does not necessarily give you the ability to commercialize your invention.
What is freedom to operate?
To bring your technology to market, you need freedom to operate. This ensures you’re not infringing on anyone else’s IP rights while monetizing your own. While your novel idea may be patented, other technologies required to manufacture or sell the resulting product might infringe on others’ patented claims. A freedom to operate search and analysis looks at whether or not commercializing your innovation encroaches on an in-force patent protected in the jurisdiction where your product will be made and/or sold. In these circumstances, an in-force patent “must be being actively maintained by payment of the yearly renewal fees, and must not have expired.”
Patentability vs Freedom to Operate
The difference between patentability and freedom to operate searches are nuanced; both are types of patent searches that should be conducted throughout the innovation lifecycle. However, what we learn from these two types of searches is quite different. While a technology may be patentable (and that patent may be worth pursuing), a patent may not give you the ability to commercialize the technology in its entirety.
An idea can be patented only if it has never been publicly disclosed, whether in a database, journal, patent application, presentation, etc. Freedom to operate is concerned with inventions currently protected by a patent. Understanding these differences and how your invention is impacted by them is important for determining next steps.
If your innovation cannot be patented or monetized in its current form, there are options. Your organization may be able to:
- Determine the patent claim(s) impeding your freedom to operate are invalid.
- Design around the prior art.
- License or buy patents your technology would infringe upon.
- Make and/or sell your invention where patents are not in-force.
Determining which solution is best in your situation as early as possible allows for strategic allocation of resources and maximized ROI.