Freedom to Operate (FTO) Search

Freedom-to-Operate (FTO) search (also known as Clearance Search, Right To Use search) will help determine whether marketing a product or applying a process infringes a valid patent at a given point of time with respect to a given market or geography. This study involves searching of Active/Live Patents that overlap with the key features of the Product/process. It is a risk management tool to assess the infringement-litigation associated with the new product or process in a given jurisdiction within a given period of time.

Freedom to Operate Search is usually conducted before the launch of a new product. Conducting a freedom to operate search can minimize the risk of patent litigation and maximize competitive strength, meet investor expectations prior to funding, or identify potential acquisition targets which can strengthen the product portfolio.

What Is The Process?


NON-DISCLOSURE AGREEMENT

Confidentiality is of concern to any inventor. We completely understand that. To give you complete assurance that your invention will be confidential with us, we sign a Non-Disclosure Agreement (NDA) and only then initiate the project.

SEARCH

Once we receive the detailed description of the invention with the novel steps clearly described (drawings, if any), our foremost priority is to invest time in thoroughly understanding the invention. Our in-house team of professionals with strong experience in various technical domains is invaluable in this understanding. Thereafter, we design appropriate and comprehensive search strategies that include selection of keywords, forming the search strings and thereafter searches on free or paid databases. Usually, at least four people are part of the search team so as to bring a complete 360 Degree perspective into the search.

ANALYSIS

Once we obtain results after searching various databases, Analysis is carried out. Our years of experience in various aspects of patenting help us in separating the wheat from the chaff.

CONSULTATION

Based on our in depth analysis, we conclude whether the invention infringes any of the prior arts and we certify whether the invention is good to proceed with the commercialization.

Timeline

As it may be appreciated that the time taken for conducting a Freedom to Operate (FTO) Search depends on the scope of the search such as countries in which to focus/target the search. But on an average, we conclude the project in 15 to 30 working days.

Details Required


1) Description of the invention, with the novel steps clearly described (drawings, if any)

2) A clear definition of the features or sub-components that require clearance

3) Scope of the search (e.g., countries in which to focus/target the search)

FAQ

1 Is Patentability Search different from Clearance Search (also known as FTO Search)?

Patentability Search provides an inventor a broad perspective on whether his/her invention will pass the patentability tests. Specifically, these searches focus upon novelty or non-obviousness aspects of an invention.

Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier filed patent application. As is obvious, purpose of the novelty requirement is to prevent prior art from being patented again.

Non-obviousness (also termed as inventive step) requires that an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. It seeks to answer the question whether the invention is an adequate distance beyond or above the state of the art”. The expression “inventive step” is predominantly used in Europe, while the expression “non-obviousness” is predominantly used in United States patent law. The expression “inventiveness” is sometimes used as well.

As can be appreciated, while the basic principle of non-obviousness determination is same across different jurisdictions, its assessment is not a precise science and varies from one country to another. This is where the assessment of a search team, with years of experience in similar technologies, can be invaluable.

A clearance search or a “Freedom to Operate” search (FTO), however, has a very different objective. In an FTO search an entity (that need not be the inventor) is primarily interested in determining whether a particular action, such as testing or commercializing a product, can be done without infringing valid intellectual property rights of others. The entity is not interested in getting a patent.

As patent rights are territorial, an FTO search is specific to a jurisdiction. For example, a patent may have been granted in US but not in India enabling an entity to commercialize its product in India without fearing an infringement action, but preventing it from manufacturing in or exporting to the US the same product. Besides this simple example, there may be a plethora of reasons why the matter claimed in a patent/patent application could still be available for use to the entity. Patent may have been granted in one country but not in another as patent laws vary amongst countries. A granted patent may have lapsed as the patentee may have not paid regular payments required by various governments to keep a patent in force (known as annuities). A granted patent may have expired as patents are granted only for limited durations. Some countries may have exemptions for certain actions. For example, New Zealand allows certain types of clinical trials even if there is an existing patent. A claim of a patent may not ‘read upon’ the technology being considered. If all of a claim’s elements are found in product/technology, the claim is said to “read on” the technology; however, if even a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology generally does not infringe the patent with respect to that claim (doctrine of equivalence being an exception).  The patent claim being infringed itself may have been granted in error and can be invalidated. Claims may be construed to cover some actions and not others, for example, because of definitions in the body of the patent specification, or admissions made by the patentee while the patent application was being examined.
Further, an FTO search has a strong bearing on licensing since an entity, once made fully aware of infringement possibilities of its product/technology may be amenable to negotiating for a license with the owner of IP rights it is infringing.

As can be seen, doing an FTO/ clearance search and rendering an opinion thereupon requires sophisticated and comprehensive knowledge of patent laws of different jurisdictions. With our decades of experience across different jurisdictions, we are fully geared up to render comprehensive FTO services.