By Todd Gerety
Commercializing a product requires significant investments of time, resources, and effort. One may attempt to recoup some of that investment by securing patents on inventive features of the product. A patent provides the patent holder with rights to exclude others from making, using, offering for sale, selling, and/or importing the patented features. However, patents do not give the patent holder an affirmative right to commercialize a product with the patented features. Put another way, having patents on some aspects of a product does not prevent the patent holder from being sued by another for patent infringement on other aspects of the product.
To mitigate this risk of unknowingly infringing on someone else’s patent, one may consider engaging an experienced and qualified patent attorney to conduct a freedom-to-operate (FTO) analysis.
What is a “freedom-to-operate” analysis?
Freedom-to-operate (FTO) means that you have the freedom to market and sell your product or service without infringing the intellectual property (IP) rights of another. Accordingly, an FTO analysis is an investigation to determine whether there is any risk that a product or service may infringe someone else’s IP rights.
With respect to patents, an FTO analysis generally involves conducting a search for patents most relevant to the product or service. The patents are collected and analyzed to determine whether the product or service may infringe one or more claims of the patents. Cooperation between the patent attorney and technical personnel knowledgeable of the product is generally required during these phases.
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The results of the FTO analysis are typically presented to company management in a manner suitable for efficient review and consideration. For example, the list of patents can be presented and organized according to infringement risk (e.g., low, medium, or high risk). Follow-on discussions may be conducted between the attorney and company management to determine appropriate strategies, both legal and technical, to circumvent any patents of particular concern.
When should an FTO analysis be initiated?
An FTO analysis should be initiated before the product or service is marketed or offered for sale. Preferably, however, the FTO analysis should be initiated while the product or service is still in development. Product changes or revisions to “design-around” a patent claim can be more easily introduced during the development phase as compared to later phases when the product design has been finalized.
Is it possible to guarantee absolute “freedom-to-operate”?
From a practical standpoint, it would be cost prohibitive to perform an FTO analysis on every aspect of a product or service for the risk of infringement. Accordingly, an FTO analysis cannot guarantee absolute freedom-to-operate your product or service.
For purposes of efficiency, an FTO analysis is generally limited to searching the patent landscape for certain product features. Alternatively or additionally, an FTO analysis can be limited to searching patents of particular competitors that may provide similar products or services in your industry. Other search criteria can be employed to render the scope of an FTO analysis more manageable and cost efficient.
It is also important to realized that patent protection is territorial. For example, a U.S. patent cannot be enforced outside the United States. Accordingly, a freedom-to-operate analysis of the patent landscape in one country will likely not be the same for another country.
Having patents on some aspects of a product does not prevent a patent holder from being sued for patent infringement on other aspects of the product. Accordingly, one may want to consider engaging an experienced and qualified patent attorney to conduct a freedom-to-operate (FTO) analysis to gain an understanding of the patent landscape for key features of your product or service. An FTO analysis may not to guarantee absolute freedom-to-operate your product or service. But, it may help to at least mitigate the risk of unknowingly infringing on another’s patent that may result from the commercialization of your product or service.
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