Patentability Searching & Freedom to Operate


Patentability Searching & Freedom to Operate

Freedom to operate searching and analysis

The team at Origin IP offer Freedom to Operate (FTO) searching, IP risk assessment, and assististance with mitigating your commercial risk as part of our legal services to clients.

A Freedom to Operate (FTO) analysis begins by searching patent literature for issued or pending patents, and then a legal opinion from our registered patent attorneys as to whether a proposed product, process or service you want to commercialise is considered to infringe any patent(s) owned by others.

If the patent search reveals that one or more patents do limit a company’s freedom to operate, the company must decide how to proceed. Assuming that the blocking patent is valid, options include:

  • Purchasing the patent or licensing in. Licensing involves obtaining written authorization from the patent holder to use the patented technology for specified acts, in specified markets and for a specified period of time. The convenience of such an agreement will depend largely on the terms and conditions of the proposed license. While there is a potential loss of autonomy, and while the patent holder will require payment of a lump sum and/or periodic royalties, it may be the simplest way of clearing the ground for the commercialization of a new technology or product.

  • Cross-licensing. This involves two or more companies exchanging licenses so as to be able to use certain patents owned by the other parties. In order to be able to cross-license, a company needs a well-protected patent portfolio that is of value to potential licensing partners.

  • Inventing around. A third option is to “invent around” the invention. This implies steering research, or making changes to the product or process in order to avoid infringing on the patent(s) owned by others. For example, if freedom to operate is limited by a process patent, then a company may be able to develop an alternative process for arriving at a similar end result and thus be able to commercialize the invention without the need to pay a licensing fee to someone else.

Choosing the right path

Whichever means is chosen, technology companies are well-advised to consider their options at an early stage. In some cases, product adaptations, or payment of a licensing fee to the patent owner, may be sufficient to avoid future disputes. Systematically evaluating a company’s freedom to operate prior to launching a new product is, therefore, a way of minimising the risk of a patent infringing the patents owned by others. It will also improve a company’s chances of finding business partners and attracting investors to support its business development plans.

IP registration assessment

The team at Origin IP offer patentability searching for information that that is available prior to the effective date of a patent application.

Prior Art includes any public document, for example published patents, technical publications such as journal articles, conference papers, websites, available products, marketing information, and the like.

A Prior Art search relates to an organised review of prior art material available from public sources, and may be provided in the form of :

  • Patentability searches

  • Patent examination searches

  • Validity searches

  • State-of-the-art searches

  • Prior Art searches may also be used to determine the value of a potential investment

A patentability search prior to filing a patent:

  • May speed up prosecution of a patent, as the claims may be configured to take into account the prior art

  • May reduce overall costs by saving time, as potential future hurdles may be avoided

  • May indicate where research and development investments should be allocated if an unexplored field is discovered

  • May indicate existing technology which could be problematic from an infringement perspective. Take note that an infringement analysis is a different type of search.