Freedom to operate search to avoid patent infringement

Eureka! You’ve just invented something, patented it and now it is time to make your fortune from it.

Posted May 17, 2018

Hold your horses, Sonny Jim… Have you checked to see if you have the freedom to operate?

What is FTO?

Freedom to operate, or FTO for short, is a check that will confirm that any product you plan to produce and commercialise, that includes your super-duper new invention, doesn’t infringe upon anyone else’s valid intellectual property rights.

It can help you to check that your products, technologies and processes are free from the risk of patent infringement, help you understand your licensing needs and steer your product developments in the right direction.

Patent documents contain lots of information. They include a description of the invention, technical data and a legal set of claims that define the protection of the invention. If your proposed product infringes on these claims then you might need to consider your options.

Huh, seriously, I can’t just automatically make and sell my own invention?

Nope, a patent doesn’t give you the right to do anything. A patent provides you, the inventor, protection and the exclusive right to stop others, for a limited period, from making, using or selling your invention without your permission in the jurisdiction covered by the patent.

If your invention includes patents already held by another party then, they have the same exclusive rights as you on their technology. In other words, you don’t have freedom to operate.

What is a freedom to operate search?

A freedom to operate search is a due diligence process which aims to identify any active or pending patents that may get in the way of your freedom to operate.

The results of an FTO search are used to identify, from a legal perspective, whether your proposed product, process or service will infringe any other patents.

Does my invention use any other invention?

An invention can be a device, process, method of manufacture or composition of matter—so there are lots of things to consider. Let’s try and simplify it with a basic example of FTO.

You have invented an eraser tip for a pencil and have been granted a patent for this technology. However, you didn’t invent the pencil—and someone else owns an active patent for it. In this scenario, you would not have the right or ability to manufacture and sell pencils with an eraser-tip without infringing the original pencil patent. In other words, you wouldn’t have the freedom to operate.

Does that mean I’ll never make money from my invention?

Not necessarily. If a patent blocks your freedom to operate, there are a number of potential solutions.

I don’t have freedom to operate—what are the next steps?

Wait for patent expiry

Patents normally last for twenty years from the filing date—if they get granted. But patents are not cheap to upkeep and many patents are allowed to lapse before this twenty-year period ends. Maintenance fees may go unpaid if a patent is deemed unworthy of keeping or the owner hits financial hard times. In these cases, the patent will lapse early.

License, buy or sell patents

Licensing or buying patents might be the most obvious and easiest way to circumnavigate a freedom to operate infringement. Licensing a patent means the original holder owns it, but they give permission for you use their patent. Usually there will be rules specifying your use of the tech for a purpose, market and timescale. A cross-licensing agreement is another alternative—an agreement where two or more companies allow the other to use their patents.

Keep in mind, if the patent owner is a direct competitor, they might not be keen to share the rights you require.

Sell your product elsewhere

The patented technology that blocks your freedom to operate might be territorial. Patents are governed by jurisdictions—if the technology you wish to use is not protected in another country then is likely to be in the public domain.

Let’s go back to the pencil.

The inventor of the pencil chose to protect it in the USA and Asia, but didn’t feel like Europe was ready for the pencil—it wasn’t the right market for this. This means that you could commercialise your product in Europe—if that was a market you might want to capitalise upon. Just remember to get adequate protection for your eraser tip in that jurisdiction.

Invent-around

An ‘invent-around’ is a process to establish infringement risks within the patent blocking your freedom to operate and adjusting your invention to avoid infringement. This is a great option if the patent in question has specific claims and you can find a way to sidestep those claims. You are likely to be able to use the idea of a patent with narrow claims, but create a sufficiently different invention to get your patent.

What if I can’t find anything?

Establishing the freedom to operate is not always straightforward. China alone applied for over 1 million patents last year. Thousands are granted and published each week. Plus there could still be a patent application pending at the patent office. Patents often don’t get published until around eighteen months after filing—meaning there is no way for you to know about, or view, a patent blocking your FTO.

An FTO search is a necessary activity to conduct to avoid litigation and infringement costs further down the line. By systematically evaluating your freedom to operate through each stage of product research, development and launch you will minimise risk of patent infringement.

The dangers of free patent search tools

Free patent search tools can cost you in the long term—not just in the form of money, but time and risk too.