Introducing a new product, service or process into the market is a stimulating experience. You have invested both creativity, time and resources to create something that is indeed innovative. However, now that you decide to uncork the champagne and shoot your brainchild, there exists an all-important question which you should put: is there any chance that your invention will walk into a legal minefield?
And it is here that the Freedom to Operate (FTO) searches enter the picture, that is the last layer of protection of your intellectual property world.
What is an FTO search really?
Suppose you have cooked a great cake. A patentability search would also inform you whether anybody tried to bake this cake before (is it novel and inventive enough so you would get your own recipe patented?). The question presented in an FTO search, however is not the same: it presents an equally crucial question: can you sell your cake and serve it without the risk of another company asserting that you have used they use patented ingredients or a patented method of baking the cake?
Simply put, a Freedom to Operate (FTO) search, also termed as clearance search or right-to-use search is a thorough search, which seeks to pin point whether your intended product, process or service is likely to infringe the active and enforced patent rights of other parties in the geographical locations where you wish to operate (manufacture or sell, import, or use).
It is all about risk analysis, about knowing that there are obstacles on the road before you pour a mountain of money on production, marketing, and distribution.
The most frequent misconception about patentability is that when an invention can be patented (i.e., is new and non-obvious), then one has the freedom of operation. This is not the case at all.
And this is what is different here:
Patentability Search: Questions: “Is my invention new and inventive will it allow me to own a patent?” It examines all the previous art (patents, publications, products, et cetera) including that which is no longer in effect, so as to learn whether novelty and non-obviousness prevail.
Freedom to Operate (FTO) Search: Aims: Expossible: “May I commercialize my product/process without infringing on an existing patent right of other?” It will be targeted to specifically identify patents that are already issued and pending applications in your target markets as they search out the claims that your product or process could fall under.
You might have an exciting, very patentable invention; but you would still be guilty of patent infringement by taking one of the components, manufacturing processes, or even that particular feature of design. Consider a radical innovation such as a new smart phone. The phone as an item could be patentable, but the camera system, battery technology, or charging scheme could have been taken previously by some other firm with a different patent.
When and How Businesses Should Conduct an FTO Search
Time is essential to an FTO search. The sooner you do it the sooner you are able to flex on it concerning risks.
Ideal Timing:- Define Your Product/Process: Explain what your invention is in clear terms and segment it up into its key features, functionality and any particular components or processes.
- Find Target Jurisdictions: patents are territorial. There is need to carry out an FTO search in all the countries in which you intend to manufacture, sell, or use your invention.
- Rank Panel: Search patent databases. Some common examples of national and international patent databases include the WIPO Global Design Database, the USPTO, EPO, IP India, and DesignView. Target active (granted and in-force) patents and other pending applications.
- Keyword & Classification Search: Use applicable words that explain the characteristics of your product and its functions. To reduce your search, use internationally established classification systems such as Locarno Classification (designs), Cooperative Patent Classification (CPC) and International Patent Classification (IPC) to utility patents.
- Claims Analysis: It is the most crucial and painful part. The legal scope of a patent is defined as patent claims. You (or your IP professional) have to carefully compare your product/process to the contents of those patents found to be against it to test whether an infringement may have occurred. This needs profound legal interpretation and technical knowledge.
- Evaluate the Risks and Choices: Should the risk be found to be infringement, some ways to deal with it may involve:
- Designing Around: Changing your product/process so as to create around the patent claims.
- Licensing: Obtaining the rights to an invention by the holder of the patent to utilize his/her patented technology at a charge.
- Acquisition: buying the patent.
- Attacking the Validity: This is a difficult and most of the time a costly exercise should you feel that the patent is not valid.
- Cross-Licensing: A trade in patent rights with a firm.
- Seek a Legal Opinion: In high stake cases, a legal opinion by a skilled patent attorney is a priceless asset to the situation. This gives you the reasoned evaluation of your risks in FTO.
- Define Your Product/Process: Explain what your invention is in clear terms and segment it up into its key features, functionality and any particular components or processes.
- Find Target Jurisdictions: patents are territorial. There is need to carry out an FTO search in all the countries in which you intend to manufacture, sell, or use your invention.
- Rank Panel: Search patent databases. Some common examples of national and international patent databases include the WIPO Global Design Database, the USPTO, EPO, IP India, and DesignView. Target active (granted and in-force) patents and other pending applications.
- Keyword & Classification Search: Use applicable words that explain the characteristics of your product and its functions. To reduce your search, use internationally established classification systems such as Locarno Classification (designs), Cooperative Patent Classification (CPC) and International Patent Classification (IPC) to utility patents.
- Claims Analysis: It is the most crucial and painful part. The legal scope of a patent is defined as patent claims. You (or your IP professional) have to carefully compare your product/process to the contents of those patents found to be against it to test whether an infringement may have occurred. This needs profound legal interpretation and technical knowledge.
- Evaluate the Risks and Choices: Should the risk be found to be infringement, some ways to deal with it may involve:
- Designing Around: Changing your product/process so as to create around the patent claims.
- Licensing: Obtaining the rights to an invention by the holder of the patent to utilize his/her patented technology at a charge.
- Acquisition: buying the patent.
- Attacking the Validity: This is a difficult and most of the time a costly exercise should you feel that the patent is not valid.
- Cross-Licensing: A trade in patent rights with a firm.
- Seek a Legal Opinion: In high stake cases, a legal opinion by a skilled patent attorney is a priceless asset to the situation. This gives you the reasoned evaluation of your risks in FTO.
Early R&D Phases: By performing initial FTO search at the very early stages of your product idea (when product concept remains fluid), you have time to design around the infringing patents and save laborious amounts of time and money in the future.
Significant Investment: Definitely before getting into massive production, marketing campaigns, or even taking up big investment funds. An unadulterated FTO opinion would have far reaching effects to investor confidence.
Before Product Launch: An exhaustive FTO search is highly demanded before putting any of your products into any new market.
Pre-Mergers & Acquisitions: During due diligence, in order to evaluate the possibility of liabilities connected to the target firm products.
How to Conduct an FTO Search:
Although conducting FTO comprehensive search is usually a legal matter that requires skills of skilled patent attorneys or IP professionals, it is essential to know the rudiments:
Real-World Risks of Skipping This Vital Step
The failure to consider FTO searches may result in disastrous repercussions on your business:
1. Expensive Lawsuits: The most direct and disastrous Risk. Should you violate a patent that is still in force, then the patent owner is allowed to sue you not only on damages and injunctions (which will require you to cease production and sale), but even on the attorney fees as well. The legal cost will end up tolling your pocket and managerial resources.
2. Product recalls & redesigns: In case you find out that there is infringement of your product even after launch, you may incur huge losses due to recalling the product in the market and redesigning the product as well.
3. Exit of Investment and Market Share: Investors do not risk using businesses that face a huge legal liability. A funding crisis is possible over an FTO problem which will leave the others at an advantage to be far ahead whilst you are still fighting in court.
4. Tarnished image: A reputation as an infringer can be disastrous to your brand image and consumer confidence.
5. R&D Money Down the drain: Money and years lost on researching a product only to discover that it cannot legally be sold is the worst case nightmare.
How Intellect Bastion Can Guide Your Innovation Journey
At Intellect Bastion, we realize that there is a fine balance between ways that your invention is a trade secret and ways that the invention is made available to the public by using patents. Our experts assist you through such decisive choices.
We put your innovation into action by:
- Planning Secrecy: Making sound NDAs to offer your invention secrecy in its initial stages.
- Evaluation of Patentability: Offering professional recommendations about novelty and prior art to increase the successfulness of your application patent.
- Exploring the IP Terrain: Creating effective intellectual property plans that correspond with your ambitions.
- Informing Disclosure: Advising you how and when to disclose your invention to maximize its commercial value.
- Complete FTO Study: Conducting the FTO searches, the analysis of patent claims, and market details to identify the threats of infringement.
- Mitigation Strategies: Provisions of solutions such as designing around patents, licensing, or validity challenge to keep that brand.
- Proactive Enforcement: Ensuring that you have great IP structures in place to prevent reproduction and tip-top you off competitively.
- Go together with the Intellect Bastion and thematize your innovative idea into a safe, prosperous success that achieves the market.
CONCLUSION
Although this guide is of excellent background, please bear in mind that complicated FTO scenarios regularly profit by the experience of Intellectual Property professionals. One of the most headache-saving, economical and calming things you can do is to invest in a proper FTO search up front so it saves you the headache, the dollars and more importantly your peace of mind later on. Your amazing invention should not end you in trouble as you must seek your Freedom to Operate!
