FTO stands for “freedom to operate.” It refers to the legal ability of a company or individual to use, manufacture, or sell a particular product or process without infringing any existing patent or other intellectual property rights held by other companies or individuals. Companies may conduct FTO searches or analyses to identify potential intellectual property obstacles before they begin commercializing a product or process.
There are several challenges or risks associated with conducting a freedom to operate (FTO) search or analysis. Some of the main ones include:
Incomplete or inaccurate information: FTO searches rely on public databases and records, which may not always be up-to-date or complete. This can lead to missed or overlooked patents or other intellectual property rights that could pose a risk. For example, we recently identified an important US Patent that was not to be found on the website of the European Patent Office.
Changing legal landscape: The patent and intellectual property landscape is constantly changing, and new patents or legal decisions can emerge that could affect an FTO analysis.
Legal language: Patents and other legal documents can be complex and difficult to interpret, which can make it challenging to understand the scope and implications of existing intellectual property rights. Words can sometimes have a slightly different meaning in law than in everyday language.
Costs: A comprehensive FTO analysis can be costly and time-consuming, especially if legal assistance is required and as a result a reduced analysis is often carried out with the (small) risk of overlooking a relevant patent.
Risk of litigation: Even if an FTO search and analysis are conducted, there is still a risk that a patent holder may sue for infringement to try and obtain compensation or set up a licensing deal.
It’s important to note that FTO analysis is not a guarantee of freedom to operate, it’s a way to identify potential risks and make informed decisions on the chances of successfully commercializing a product or process.
There is no one-size-fits-all approach to conducting a freedom to operate (FTO) search or analysis, but there are several best practices that can help ensure the most thorough and accurate results. Some ways to do the best FTO include:
Hire a professional: Conducting an FTO search and analysis can be complex and time-consuming, so it may be beneficial to hire a professional with experience in patent and intellectual property law.
Use multiple search tools: Different search tools and databases may provide different results, so it’s important to use a variety of resources to ensure a comprehensive search.
Look beyond the patent: A comprehensive FTO search should also include a review of trademarks, trade secrets, and other types of intellectual property that may be relevant.
Consider the context: It’s important to take into account the specific context of your product or process, including its intended use, the industry it operates in, and any related technologies. In some industries, such as information and communications technologies, licences are easily obtained from the major patent holders. In other industries, such as biotechnology, it may be more difficult to obtain a licence.
Review the claims: Carefully read and review the claims section of the patent as it describes the scope of the granted rights. Only the claims are relevant – the description and figures of the invention is used to interpret the claims.
Update regularly: The legal landscape is constantly changing, so it’s important to conduct regular updates to your FTO analysis to stay aware of any new patent applications, granted patents or legal decisions that may impact your product or process.
Be prepared for litigation: Even if an FTO search and analysis are conducted, there is still a risk that a patent holder may not agree with your assessment that a patent is irrelevant and may sue for infringement. It’s important to have a plan in place to handle potential litigation.
Get legal advice: If any potential issues are identified, it’s recommended to seek legal advice to understand the implications and potential risks and to make informed business decisions.
It’s important to keep in mind that an FTO analysis is not a guarantee of freedom to operate, but it is a valuable tool for identifying potential risks and making informed decisions about the commercialization of a product or process.
As a company looking to commercialize a new product or process, you are expected or even required by law to ensure that your products do not use other intellectual property without the permission of the owner. it’s therefore important to ensure that you are not infringing on any existing patents or other intellectual property rights held by others.
At SONNENBERG HARRISON, we specialize in conducting comprehensive freedom to operate (FTO) searches and analyses to identify potential intellectual property obstacles and help you navigate the legal landscape.
Our team of experienced patent attorneys will use a variety of search tools and resources to conduct a thorough search of existing patents and other forms of intellectual property. We’ll also take into account the specific context of your product or process, including its intended use and the industry it operates in, to ensure a comprehensive analysis.
In addition to identifying potential obstacles, we’ll provide you with legal advice and guidance on how to mitigate any risks and make informed business decisions. We’ll also keep you updated on any changes in the legal landscape that may impact your product or process.
Don’t let intellectual property issues hold you back from commercializing your innovative product or process. Contact us today to learn more about our FTO search and analysis services and how we can help you protect your intellectual property and ensure freedom to operate.
Please feel free to get in touch if you would like more details.
