A freedom to operate opinion is a costly investment in the future of a new product or service. While this investment is not justifiable in every situation, the benefits of a thorough freedom to operate report, paired with an attorney’s expert analysis and opinion, are well worth the expense for many entities. An FTO opinion allows us to gain insight into the viability of a new product based on a company’s ability to make and/or sell it without infringing on any existing patents.
Having a clear understanding of your risk of infringement is the greatest advantage of an expert opinion on your ability to freely make and sell your product. There will always be some uncertainty around your freedom to operate. However, an in-depth FTO search identifies existing patents, as well as patent applications, that you may infringe upon by commercializing your invention.
Depending on the unique situation your entity faces, this knowledge is useful not only for your organization but also for potential investors, acquiring companies, or businesses interested in licensing the technology in the future. Investing in a freedom to operate search, report, and opinion can minimize the possibility of a patent holder later claiming willful infringement as well.
While patents may be the sole focus of your freedom to operate report, it is also possible to encompass other intellectual property in the search. Consider reviewing existing trademarks to ensure your product or service’s proposed name is not protected. It may also be worth learning if any part of your technology is included in a defensive publication. While this does not prohibit you from utilizing the invention in your own goods, your competitors are also free to use it.
Once you understand the potential risks of making and selling your new product or service, a freedom to operate opinion can help you decide how to move forward. What changes are necessary to your technology to commercialize it without infringing on others’ patents? An FTO report offers multiple options based on your product and industry, as well as the technology landscape that surrounds them. These options include designing around patents, licensing necessary technologies, purchasing intellectual property, invalidating a patent, “delaying commercialization until the patent expires,” or commercializing in a region where patent protection does not exist.
Patentability vs Freedom to Operate
We can learn a lot from a freedom to operate opinion. However, it is not a patentability opinion. The ability to patent a technology does not mean that you can produce or profit from it. That is because there may be other, tangential, patents that you would infringe on. The opposite is also true; the ability to patent an invention is not guaranteed by your freedom to operate.