What is a freedom-to-operate search?

A freedom-to-operate (FTO) search is generally undertaken when trying to establish that a new product or service offering will not infringe on a third party’s patents. It is also worth saying that there exists a common misconception about whether a patented product can infringe other patents. It can. Even if your product is protected by a patent, it’s still possible that features of your product are covered by another patent.

A freedom to operate search involves identifying granted patents which are in force in your region(s) of interest and assessing whether your actions in respect of the product or service offering would infringe any of the identified patents.

Whilst this sounds like (and can be) a very sensible thing to do, it is notoriously difficult to complete a freedom-to-operate search with certainty. Indeed, because a patent searcher has only a finite amount of time to consider potential relevance of potentially millions of granted patents, it is simply not possible to guarantee that a business has freedom-to-operate in respect of even a single aspect of a given product or service offering, let alone in respect of every aspect of the product or service offering.

Conducting a freedom-to-operate search and providing associated advice is often complicated and time-consuming, meaning that costs can be high, often at least an order of magnitude higher than the patentability search discussed in the previous section.

Nevertheless, there are techniques which can be used to reduce costs to a more manageable level.

  • Limit your search by geography. If you are selling a product in the UK and France, then granted patents in China are of no immediate relevance to you (unless you will manufacture your product in China). Only consider searching for patent documents in countries in which you intend to operate (e.g., manufacture, store, import or sell your product, or offer your service offering) at launch. If budget permits, you could also consider additional countries in which you are highly confident you will want to expand to in the next twelve months.
  • Consider only the core feature(s) of your product/service offering. If you want to sell a vacuum cleaner with a cyclone design that renders it particularly effective, and also uses a particular screw fastener to attach the parts together, it is likely that the type of screw fastener could be changed without affecting the performance of the vacuum cleaner, but that the cyclone design is key to effective performance. In this case, it is likely to be more important to you to know whether your cyclone design rather than your screw fastener infringes a third party patent.
  • Consider the likely sources of relevant patents (your main competitors). It’s far easier to look through the patents of your main competitors than to start a search of all patents from scratch.
  • Consider what you would do if you found a patent that covers your product. One option is to consider an alternative technical approach that is outside the scope of the patent (a workaround). Another option is to consider taking a license for the patent if use of the patented feature is key. You may consider a patentability search to find any relevant prior art to call the validity of the patent into question. You may even consider that the potential downsides of infringing a patent are not sufficiently negative to cause you to stop (though it is worth seeking legal advice before deciding to proceed in this way, particularly if you know of a relevant patent or you have done little to no searching).

A freedom-to-operate search strategy is a valuable part of any new product strategy.

A sensible budget for commissioning a freedom-to-operate search in relation to a single product concept and receiving associated advice in relation to a single country is £5,000 to £10,000. As you can appreciate, as features and countries mount up, so do the costs.

If you want to discuss how this situation relates to your own commercial situation, we’d be happy to advise you. Please contact us.

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