SUMMARY
KEY TAKEAWAYS
- Freedom to operate (FTO) verifies that a product can be marketed without infringing existing patents.
- An FTO analysis is based on the identification of the essential technical characteristics of the innovation.
- Researching and analyzing active patents allows for the assessment of legal risks before market entry.
- In the event of a blocking patent, several solutions exist: licensing, technical workaround, or legal challenge.
Freedom ( to Operate FTO) is the process of determining whether a product can be marketed without infringing on patents or intellectual property rights held by third parties. This guide outlines the essential steps for navigating this complex environment, while also providing valuable advice from our Senior Patent Engineer, Catherine Derbois, to ensure the success of each phase of your project.
Freedom of exploitation: definition and issues
When developing a new innovation, it is essential to understand how it can fit into the existing landscape of intellectual property rights.
The Organisation for Economic Co-operation and Development (OECD) defines freedom to operate as a legal assessment to determine whether the manufacture, useor marketing of a product or process can be done without infringing intellectual property rights held by third parties, such as patents, in a specific jurisdiction and at a specific time.
What is the difference between freedom to exploit and prior art search ?
The search for freedom of exploitation aims to verify that a product or process can be exploited commercially without breaking active patents, while the search for anteriority aims to ensure that an invention is new and inventive to allow its deposit in the form of a patent.
These well differentiated concepts, it is time to look at the concrete steps to secure your freedom of exploitation.
Step 1: Define precisely the object of your innovation
List its essential characteristics
The first step is to identify the specific object on which you want to verify your freedom to operate. This could be a machine, a molecule, a marker, a product, or a manufacturing process.
The next step is to determine the essential technical characteristics of this object, that is to say the elements that allow it to work and give it its main function.
These features must not only provide added technical value, but they must also be novel and innovative compared to existing solutions. It is important to adopt an objective in this analysis, taking into account the facts and the technical aspects that truly offer something innovative.
How to do it?
To achieve this stage, it is recommended to work closely with your engineers, as well as your marketing and sales. They will be able to understand the technical aspects of the product and identify its differentiating elements in the market.
Where possible, it is recommended to limit the number of technical features you consider essential. An effective analysis should focus on 3 or 4 key points. This prevents getting sidetracked in the subsequent technology watch and patent search phase.
Expert advice: "Don't spread yourself too thin! Focus on the aspects that truly define your innovation."
Step 2: Search for relevant patents
The second step involves conducting prior art searches, solely on patentsand concentrating on the technical features you have identified. This phase is absolutely essential to determine whether existing patents claim these features and could therefore restrict your freedom to operate. These searches should be conducted as broadly as possible internationally, and in this context, the quality of the database you use will be crucial.
Define keywords and actors
For each technical characteristic, you must:
- Define lists of keywords that allow you to precisely describe the functionality of the feature.
- Identify key players in the sector who work in the same field. This will help you target relevant patents and ensure that none are missed in this initial search.
Search in patent bases
The search must cover a 20-year, as this is the maximum validity period of a patent. You will use these keywords and actors to search available patent databases. Although some databases are freely accessible, this task can be complex and time-consuming.
Expert advice: "To simplify and centralize your research, tools like IPMetrix are essential. They allow you to aggregate data from different databases, perform targeted searches, and generate precise statistics on the results."
Step 3: Analyze your results
Analysis of patent claims for each of the 3 characteristics
Once the searches are complete, you will obtain a list of results for each technical feature. Each feature requires a specific query. However, the work doesn't end there. You must then examine the patent claims.
The claims are the legally binding part of the patent, and they determine the scope of protection. You must verify whether the technical feature you are analyzing is claimed and whether it relates to the functionality you are developing.
The goal ? To identify whether a competing patent claims a technical feature identical or very similar to the one you wish to exploit for the same functionality. If so, your search is already a success because you have just identified a potential threat.
Verification of the legal status of patents
Once the relevant documents have been identified, you must examine their legal status. You must verify:
- The countries in which the patent is filed.
- The validity of the patent in these countries (always in force or not): if the patent has fallen into the public domain, then the technology described is free to operate.
Possible scenarios
- If the patent is discontinued (invalid), you are free to exploit the technology in that country.
- If the patent is valid in some countries but not in others, you must analyze it based on your manufacturing areas (where your factories are located) and/or your target markets. For example, if the patent is still in force in a country where you do not plan to market or produce, you are free to exploit it in other countries.
Summary
At this point, you get a table that allows you to sort the patents in three categories:
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- Irrelevant patents (they do not describe the targeted technical characteristics).
- Relevant patents that are no longer in force in the countries concerned.
- The relevant patents that are in force in your countries of interest and to be analyzed in more detail.
Expert advice: "By processing your results in this way, you will obtain a clear list of problematic patents, those that could represent an obstacle to your freedom to operate."
Step 4: Check the protection of the object as a whole
Global analysis
Once you have analyzed the essential technical characteristics individually, it is time to move on to analyzing thecomplete object. This involves checking whether the entire device, which incorporates all these characteristics, has already been protected by a patent. The focus is no longer on a single characteristic, but on the combination of characteristics within a comprehensive device.
The goal of this step is to search for patents that describe a device similar to the one you plan to market. You need to examine how the identified patents structure and protect the entire device to verify whether they utilize one or more of the essential features you have defined.
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- Search for patents covering the entire subject matter: It is essential to identify patents that describe the subject matter in its entirety and not just isolated elements.
- Analyze the selected documents: If a patent describes the entire device and refers to one or more of your essential technical features, this document should be kept for further analysis.
- Eliminating irrelevant patents: If a patent does not cover the essential features in their entirety, it can be eliminated from the analysis process.
Expert advice: "Be careful, your monitoring doesn't stop there! As this research and analysis takes place over a long period, it's possible that new patent applications have been filed but not yet published at the time of your search."
Step 5: What to do in the event of a blocking patent?
If a blocking patent is identified, several options are possible:
- Negotiating a license : You can negotiate with the patent holder to obtain a license to use the technology. This allows you to legally use the technology in exchange for a royalty payment.
- Technical workaround : It is possible to adapt your technology to circumvent the claims of the troublesome patent and thus avoid any infringement.
- Challenging validity : If you believe the patent is not valid, you can gather evidence (prior patents, etc.) to challenge its validity with the relevant authorities.
Expert advice: "Negotiating a license is often more cost-effective than engaging in expensive legal proceedings. Depending on the importance of the patent, you can base the royalty on the actual impact of the protected technology."
The main traps to avoid
- Underestimating claims : Focus on issued patents; it is the claims that define legal protection.
- Minimizing business risks : Do not underestimate the financial impact a blocking patent can have on your business.
- Ignoring patent expiration dates : Patents change. Conduct a new analysis 3 to 6 months before commercialization to ensure no new patents have been filed.
- Don't hesitate to consult an expert : A Patent Engineer or an IP Consultant will help you conduct the right research and analysis and then avoid costly disputes.
Ensuring freedom to operate your innovation is a complex process that requires centralizing and analyzing a large volume of information. A tool like the TKM platform simplifies this task by allowing you to centralize all data on your technical specifications and patents, actively monitor and track developments by your competitors and the state of the art, and manage risks more effectively.
Our solutions can also support you in various aspects of your innovation projects.
Furthermore, the support provided by TKM helps you avoid common pitfalls and secure your project. Need support to innovate? Contact our teams!
