Ready to commercialise your invention? Stop! Do you have Freedom to Operate?
2nd August 2018
“I have patents on my invention. I don’t need to worry about other people’s patents – do I?” Yes, you do! Having your own patent does not mean that you can ignore other people’s patents. For example, you might have a patent on a specific compound, but another person might have an earlier patent which covers the whole class of compounds.  Or if you have a patent on a certain part of a process, there might be other patents which cover upstream or downstream parts of the process that you are planning to use. Therefore, before you start commercialising your invention, it is prudent to do a Freedom to Operate (FTO) search to try to find any relevant patents.  There are generally three stages to this: (1) Define the product, process or method that you plan to commercialise in terms of keywords.  These keywords will be used to search the patent databases to try to find relevant patents.  You will also need to decide on which countries you are likely to make/use/sell your invention because you will need to search the databases of those countries’ patents. (2) Commission a patent search using the keywords you have selected.  The search should cover both patents and patent applications in the countries that you have selected. These searches are usually performed by specialist searching companies. (3) Analyse the results of the search. The number of “hits” that you get from your search will depend on how broadly your keywords were, on how many different countries’ patent databases you have searched, and on how many relevant patents are in those databases.  This analysis is usually done by a patent attorney.  All of the claims of all of the patents need to be carefully reviewed. The claims of pending patent applications (which might later mature into patents) also need to be considered, as well as the likelihood of those patent applications actually being granted. Often the patents/applications are sorted by the patent attorney into “relevant”, “possibly relevant” and “not relevant” (or red, amber and green) bundles, indicating the level of risk associated with those patents/applications. On the “relevant” (red) cases, further investigations might be needed.  The options to be explored here could include seeking a license under the patent, challenging the patent’s validity, designing around it or waiting until the patent expires. Whilst an FTO search might cost £500-£2500 (depending on how exhaustive you wish it to be), the costs for the analysis will depend mainly on the number of patents which are found. (The more patents that are found, the more time it will take to analyse them.)  The analysis costs might therefore be up to £5,000, or higher. Carrying out an FTO search and analysis can be a time-consuming exercise, but it is money well spent.  For example, it is much better to find out about relevant patents/applications before you invest $10 million in a new manufacturing facility. If you don’t, then you risk being sued by a competitor for patent infringement (and possibly being shut down)!

About the author

Dehns Patent and Trade Mark Attorneys
Philip is a UK and European patent attorney. His work is largely with start-ups, small/medium size companies and universities with inventions in the pharmaceutical or biotechnological fields. He has over 25 years‰Ûª experience in dealing with the issues which are important to such entities.

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