Make the most of your commercialization plan

One of the primary steps that companies take towards protecting their Intellectual Property rights is to patent their inventions. In addition, companies should be able to monetize their patent portfolios by making or selling products. Contrary to common belief, patents do not guarantee a product’s commercial success, although they grant applicant rights to exclude others from making, using or selling the patented invention.

As opposed to products, patents protect inventions. In spite of the fact that one may have invented and patented a specific feature of a product, a third party may have a patent covering a different specific feature, or a patent covering the product as a whole.

Therefore, a company’s commercialization plan should include Freedom to Operate (FTO) analyses.  Freedom to Operate or Right-to-Use or Infringement studies involve patent searches to ensure seamless commercialization of a newly developed product / technology and avoid potential infringement of the Intellectual Property Rights of others. FTO searches are not optional, but rather necessary due to their business-critical nature.

Why are Freedom to Operate studies so relevant to your organization?

1. Patent intelligence:

Early-stage / preliminary FTO studies are initiated early in the R&D process (i.e. conceptualization stage), and are designed primarily to provide patent intelligence and to assess the overall patent landscape rather than only determining the risks. Patent intelligence studies are not only useful for establishing a research and development roadmap and establishing a more robust patent portfolio, but also for monitoring competitors, anticipating threats, and developing strategies to minimize litigation risk.

SciTech Patent Art, for example, offers periodic patent alerts, which help companies develop thoughtful commercialization plans. Patent Alerts assist companies in tracking the latest developments in technology or competitors’ innovation strategies well in advance, and in designing mechanisms for avoiding potential infringements.

2. Overcoming challenges:

During an FTO analysis, if the patent search reveals one or more valid patents limiting a company’s freedom to operate, options for the company to proceed include:

  • Licensing the patent from the patent owner to use the patented technology for a specific purpose, in specified markets or for a specified period of time.
  • Invent around” the invention, by steering research, or making changes to the technology, so as to avoid infringing on the patent(s) owned by others.

SciTech Patent Art has been engaged in many due-diligence studies to identify potential licensing partners and opportunities by assessing the strength of the patent portfolio. In one instance, SciTech Patent Art conducted a due diligence of a company’s patent portfolio in the area of Industrial Valves, aimed at comparing this company’s patents with those of its competitors and possibility of commercialization in unrelated applications. SciTech Patent Art also highlighted areas of opportunities for the company in adjacent industries, and lastly, through an FTO study, identified possible blocking patents and ruled out potential threats.

3. Clearing the path ahead

During an FTO analysis, if the patent search does not uncover patents blocking market access, it may be appropriate to seek patent protection for a newly developed technology if it meets patentability criteria. While the grant of a patent is not in itself sufficient to clear the way for commercialization, it is a useful step to stop others from commercially exploiting the patented invention.

In this regard, SciTech Patent Art conducts prior art or novelty searches, also known as patentability searches, which are conducted to unearth the closest prior art, be it a patent publication or non-patent literature search. Conducting a patentability search is the first step to file a patent application for an invention. A patentability search determines how unique an invention is compared to existing inventions.

Planning a strategic roadmap for commercialization of your technology should begin with evaluating the above options.

SciTech Patent Art, a 20-year-old patent and technology intelligence firm specializes in Freedom to Operate (FTO) searches. Should you have any questions about Freedom to Operate, please contact SciTech Patent Art.


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