A recent conversation with one of our clients prompted us to reinforce our belief that early-stage freedom to operate (FTO) searches are business critical. Our client, a corporate R&D organization, informed us of a situation in which one of their teams spent significant time working on product development. Just as when they were getting ready to develop their marketing / commercialization strategy they uncovered a key patent that potentially blocked / delayed their product launch.
In a typical R&D lifecycle process of an organization, due diligence is conducted on proposed projects / innovations presented by several teams. Following this, a few projects are selected that meet the business needs. Such projects typically have a long lifespan of several months to years with hopes of a successful product launch in desired geographies. It is possible some R&D proposals are premised on the assumption that their inventions qualify for patentability at the outset of the due diligence process. Researchers tend to believe that a freedom to operate (FTO) study is conducted when a product has commercial potential.
SciTech Patent Art advises R&D organizations to conduct an early-stage freedom to operate search in order to clarify these beliefs. An early-stage freedom to operate search provides benefits such as –
- Identify key players and patent density in the technical domain.
- Identify patents similar to or closely related to the proposed inventions, thus providing researchers with a time advantage for designing around.
- Mitigate risks of infringing the patents of others.
- Getting into licensing or cross licensing discussions with potential partners who own some of the features of the invention.
By conducting an early-stage freedom to operate, a strategic commercialization path could be charted out saving significant time, effort and resources. SciTech Patent Art highly recommends conducting a freedom to operate search early in the process to make informed decisions.
SciTech Patent Art has developed a systematic approach to conducting early-stage freedom to operate studies and has been serving many clients over the years.
Key elements of a Freedom to Operate (FTO) study:
Freedom to Operate Search and Analysis is a complex process as it includes several key elements that need to be considered:
- Geographical limitations: Since intellectual property rights are specific to different jurisdictions, a “freedom to operate” should relate to particular geography/countries/regions where the product is being planned to launch/commercialize. Additionally, PCT applications for the last 30 months should be considered for the search.
- Time frame: As the patent rights are valid for 20 or 25 years in certain circumstances , the “freedom to operate” study should consider active patents filed in last 20 or 25 years.
- Claim-based analysis: Claims are the most important part of a patent document. Claims define the boundary of the patent. and therefore, what is sought to be protected. Hence, for Freedom to Operate search and analysis are primarily based on the patent claims only.
- Product features/components: Freedom to Operate studies require a separate search on each component of the product/process. Technology/product/device/process may have many independent aspects that need to be searched alone or in combination.
- Patent Legal Status: Patents that are in force/active should be considered for the Freedom to Operate study. Expired/lapsed/withdrawn patents need to be excluded from the study.
Our Methodology for a Freedom to Operate Search:
An effective Freedom to Operate study is conducted by collecting and analyzing information during the initiation of the study. The quality of the information gathered plays an important role in making the study effective. SciTech Patent Art has been conducting Freedom to Operate searches for over two decades and has developed a Standard Operating Procedure (SOP), including unique approaches that often result in identifying good prior-art and potential blocking patents. Our Standard Operating Procedure includes:
- Spend significant time early on to understand the technology in detail
- Identify key features of the product / process
- List of countries or geographies where the technology has to be commercialized
- Develop multiple search strategies using appropriate keywords and classification codes for each key features identified
- Develop narrow and broad search strategies that cover one or more key features
- Additional searches based on the key assignee/inventors or citation searches
- Search results retrieved will be combined by one member per family,
- SPA will review the family members from interesting countries for relevancy. Patents claiming one or more components of the subject matter will be considered relevant
- In-depth analysis based on claims is conducted for the active patents.
- Relevant excerpts for all the interesting patents are captured
- For pending patent applications, most recent amended claims are analyzed
The most relevant results are presented in a manner in which they correlate with the keyaspects of the invention to assess its context.
- The relevant art is mapped against the key features
- The claims, especially the independent claims, of the patents are analyzed in detail
- Legal status for each family member from the countries of interest is verified
- The relevant patents are classified into two categories:
- Category A: Highly relevant patents that claim one or more features of the proposed invention
- Category B: Relevant patents that claim one or more features of the proposed invention with some additional limitations not disclosed in the search request.
- The relevant patents are provided in an Excel Spreadsheet with the necessary technical analysis fields and bibliographic details
- The legal status of all family members of most relevant/peripheral documents (For example, EP, US, JP and PCT) are verified
- Abandoned / Lapsed patents may also be included, if requested
- Our search methodology and search strategies are also included
- Our analysts will present our key findings over a web-meeting, phone discussion or in-person meeting
- We will highlight key patent right holders, provide an insight on the density of patent rights in the specific technology and help evaluate the competitive positioning
SciTech Patent Art offers in-depth technical analysis of patents based on the invention. Our analysts are subject matter experts in various disciplines of science and engineering. Our clients use our technical analysis to discuss with their legal counterparts for further course of action.