Freedom To Operate

FREEDOM TO OPERATE SEARCHING AND ANALYSIS

Origin offers Freedom to Operate (FTO) searching, intellectual property risk assessment, and assistance 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. It is followed by a legal opinion from a registered patent attorney advising 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 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 authorisation from the patent holder to use the patented technology for specified acts, in specified markets and for a specified period. 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 to clear the ground for commercialising a new technology or product.

• Cross-licensing involves two or more companies exchanging licenses to use certain patents owned by the other parties. To cross-license, a company needs a well-protected patent portfolio that is valuable to potential licensing partners.

• Inventing around. A third option is to “invent around” a patented invention. This implies steering research or making changes to the product or process 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 commercialise the invention without the need to pay a licensing fee to someone else.

CHOOSING THE RIGHT PATH

Whichever approach 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 a patent owner may be sufficient to avoid future disputes. Systematically evaluating a company’s freedom to operate before launching a new product minimises the risk of third-party infringement. Patent FTO investigations also improve a company’s chances of finding business partners and attracting investors to support its business development plans.

IP REGISTRATION ASSESSMENT

Origin offers patentability searching for information that is available prior to the effective date of a patent application.

Prior Art can include any public document, such as published patents, technical publications, journal articles, conference papers, websites, available products, marketing information, etc.

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

Conducting a patentability search before filing a patent can:

• Speed up the prosecution of a patent, as the patent may be written to take into account the prior art
• Reduce overall costs by saving time, as potential future hurdles may be avoided
• Indicate where research and development investments should be allocated if an unexplored field is discovered
• Highlight existing technology which could be problematic from an infringement perspective. Take note that an infringement analysis is a different type of search.