What is a Freedom to Operate Search?

A “freedom to operate search” is a specialized patent search that identifies your vulnerability to patent lawsuits.

An FTO search will compare your product to all the patents that can be asserted against you. The search will highlight the differences between your product and those patents, and give you a legal opinion that you do not infringe those patents.

There is a significant risk if a product is released without first conducting this search. Newly introduced products are especially vulnerable to infringement litigation, which can jeopardize the company’s reputation – and cost lots of money.

An FTO search is intended to identify the freedom that a corporation has to create and build a new technology for the market. The company’s purpose is to develop a product that does not infringe on a registered design or a patent.

Your freedom to operate search shows that you did the due diligence prior to entering a new market.

The due diligence is two fold: one is for yourself and your investors, and this due diligence shows that you are not vulnerable to lawsuits. The second part of the due diligence insulates you from intentionally infringing someone’s patent, which carries a penalty of triple damages.

It is always a good idea to do an FTO search prior to entering a new space. The Freedom to Operate study uncovers details that assist corporations in deciding whether a product should be developed or not, nor how it may be launched without infringing the infringement law of another issued patent.

When Should You do a Freedom to Operate Search?

In general, a freedom to operate search should be conducted as early as practicable in the products or method development cycle. This has two significant advantages:

1. Avoids excessive expenditure and resource misallocation.
2. Reduces the chances of future costly and time-consuming litigation.

A good FTO patent search can also allow an inventor or corporation to construct a design-around early in the development process, before considerable amounts of time and/or money have been invested in a product or process.

Furthermore, an FTO search can reveal opportunities to license existing technology, saving time and decreasing the risk of future patent disputes from the start.

In addition, for some entrepreneurs or businesses, particularly start-ups, an FTO search might bring assurance to possible investors or shareholders.

What Is the Relationship Between a Patentability Search and a Freedom to Operate Search?

Patentability Search

• Every publication (prior art and NPL)
• Asks the question: “Can I get a patent for this product or process idea?”
• Often, a patentability search is not a legal opinion that the idea is patentable, just general guidance.
• Focuses on the patent *specification* and what was disclosed, not what is legally enforceable.

FTO Search

• Only granted patents (and pending patent applications in some cases)
• Typically more difficult, time-consuming, and costly
• Asks the question: “Are there any active patents that could prevent me from manufacturing, selling, or importing my product or process?”
• FTOs are legal opinions that carry a lot of weight during litigation.
• Focuses on the patent *claims* – what is legally enforceable – not the *specification*.

What Exactly Is a Freedom to Operate Analysis?

A freedom to operate analysis is exactly what it sounds like: an examination of the search results with a focus on the patent claims. Other aspects of the patent, such as the specification and drawings, are less important at this time (though they may still be scrutinized), because the patent’s claims define the patent’s legal scope.

This is where a patent attorney, comes in, because knowledge and expertise are necessary in the claim analysis. In many cases, the patent attorney will review the “prosecution history” of the patent – the back-and-forth between the patent attorney and the patent examiner – to determine the scope of the claims.

The freedom to operate analysis will include a legal opinion about whether or not you infringe someone else’s patent. This is also why the FTO search costs more than other forms of patent searches, such as a patentability search.

What Else Could a Freedom to Operate Report Produce?

If some potential concerns are discovered, the following information may be found in the FTO report:

The Importance of Operational Search Freedom in Competitive Intelligence

In competitive intelligence, the flexibility to operate search is critical in the following aspects.

• FTO provides information on which patents may be infringed if the product is released and assists in designing around the patented inventions in order to release an infringement-free product.
• FTO assists in discovering prospective collaboration alternatives in order to market a non-infringing product.
• FTO searches offer information on the current legal status of the patent, i.e. whether the patent is currently enforceable in the region of interest or not.
• In addition, the FTO provides new product ideas based on expired patents.
• FTO also covers pending applications related to a product or technology and so gives information on future competition, as the patents filed must primarily result in a viable product.