Delineating The Dimensions Of FTO Search

Freedom to Operate (FTO) analysis is an elaborated search strategy to ascertain that a particular product, service, or service is not infringing on the existing patent(s) owned by others. This search affirms whether the product is commercially considered ‘safe.’ for launching in a particular market and does not violate existing third-party rights.  An FTO search includes screening a broad range of documents, including expired and expired patents. 

The team conducts the FTO search for a prospected innovation at various stages till its commercialization. The search for patent documents that are potential threats is either completed once or often during the product/innovation development cycle.

Different IP Counsels base the decision to go for a one-time FTO search or recurring FTO search on several factors. The main determining factor for this decision-making is the speculated time required for the product’s research and commercialization. In general, the products or features that need a shorter research time of around 8-10 months can rely upon a one-time FTO search result. This single FTO search is, in most cases, conducted just after the patentability search at the start of the development process. On the other hands, the products requiring a longer time for research need to regularly perform FTO searches to ensure that no related patents have been filed in that timespan between FTO study and final product launch.

The relevance of performing FTO search

FTO analyses are conducted for a wide range of reasons and by different parties. Conducting an FTO search just after the patentability search rules out the several risks relating to the infringement litigation that can come up at the final innovation stages.

Another important use of performing FTO search is in making ‘Research tree decisions.’ For any innovation, several potential research paths are considered technologically possible. An intensively performed FTO search can help choose a research pathway with the least third-party IP to reduce the risk of potential litigations and to license royalties maximally.

Ways to steer past the challenges

FTO analyses by screening the available patent documents are the first step. If the investigation results reveal that one or more patents can potentially pose a risk in commercializing the product, then the respective company’s IP counsel set out to devise the strategies to bypass the challenge.

There are several options for this, like:

·       Licensing In or Purchasing the patent: Licensing involves deriving an authorization in the written form stating the patent owner’s agreement to use his patented technology for the specified product. All the terms and conditions for usage, including time and targeted market, are defined. Though this method involves paying a lump-sum amount to the patent holder, this is considered the most straightforward way out of the situation.

·  Cross-licensing: This mode involves the exchange of patent licenses between the partnering companies. The pre-requisite for this method is a well-protected patent portfolio of the potential licensing companies that is useful to its partners.

·   Patent pools: This is a common practice observed with companies manufacturing related products. The aim is to pool the patents; it is similar to a clearinghouse for patent rights and helps the partnering companies avoid the long process of acquiring permission to use the patented technology.

·   Inventing around: Another alternative is to Invent around the patent. It involves making changes to the prospected technologies in the development of the product. If the company successfully finds a working alternative, it is saved from paying heavy amounts for licensing the patented technology.

Conclusion

Every company must compulsorily conduct FTO analyses at the very early stages of any product, process, or service development cycle. This feat is to mitigate the third-party IP  from hindering the successful commercialization of the product. The steps involved include searching for any related patent, trademark, or copyright and obtaining legal insight about the patent’s noninfringement and invalidity.

In case certain overlapping technologies or processes are pointed out in the previously patented literature, the experts, improvise the most effective way to bypass the challenge.