You have developed a new product. You might have patented it. You are ready to start selling your product.
But does anyone else have any patents which could be used to stop you selling your product? This is the question that a Freedom to Operate analysis sets out to answer.
FTO analyses are usually carried out by companies which have a specific product or service that they wish to start marketing and selling.
Before these companies start such commercial activities, it is prudent check to see whether they might infringe any third party patents in the countries where they wish to carry out these commercial activities.
The fact that the companies might have their own patents is irrelevant: having your own patent does not give you any rights to ignore other people’s patents!
The basic steps in an FTO analysis are as follows:
Define what your company is doing and in which countries
What is your company going to be doing? Manufacturing a product? Using a process?
For example, if your company is making and selling a new product, then you will need to consider whether any third parties have any patents covering any steps in the manufacturing process, any of the intermediate products or any aspect of the final product.
What countries are you going to be carrying out your commercial activities? The answer to this question will dictate which patent databases you will need to search.
Commission an FTO search
Once you have defined your company’s activities, you then need to consider how to search for patents in that area. Patent searching is a specialist task and it is often best out-sourced to specialist searching companies.
The technical breadth of the search needs to be considered. A broad search is more likely to cover all patents of interest but might be very costly to analyse; whereas a search that is too narrow might not find all relevant patents.
The FTO search should extend both to granted patents and patent applications in the countries of interest, because patent applications could later be granted.
Analyse the results of the FTO search
The FTO searcher will generally provide you with copies of the “hits” that have been found, together with a preliminary indication of the relevance of those hits. The hits will then need to be considered indepth by a patent attorney who is familiar with that area of technology in order to determine the precise relevance (or otherwise) of the hits.
The cost of analysing the FTO search results will depend largely on the number of hits that have been found and on the attorney’s time which is needed to review them fully.
For any of the most relevant documents, it will be necessary to consider what actions the company can take. If the relevant document is a patent, has it nearly expired? Can you design around the patents? Can you get a license from the patent owner? Is the patent valid or can you challenge it? Your patent attorney will be able to advise you on all of these options.
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