After writing the article Explained: Freedom To Operate (FTO) Search With Examples, learning still remain incomplete without understanding how to conduct FTO search and analysis. Therefore, we have decided to craft a step-by-step guide for you for the same.
In brief, it can be said that FTO search allows you to know what intellectual property rights including patents, trademarks, tradesecrets, and copyrights exists out there that you can infringe upon.
However, priamrily, its the patent rights for which FTO search is conducted the most. In this article also we have addressed the FTO search and analysis for patents.
So, how do you conduct the FTO search? Let’s see.
How to Conduct FTO search Step-by-Step
Typically we can divide the whole process of conducting an FTO search and analysis into 5 major steps. Let’s look at them one by one.
1. Define The Scope of The FTO Search
Like any other project, the FTO search starts with defining the objective of the search. According to the objective, we decide on our approach to the FTO search.
To define scope, we may look for limiting factors such as the territory of the search, the relevant technology area, key technical features of a product or process, etc.
Suppose we want to launch our product or process in India. Then India is definitely a territory where we need to look for any existing patents or IP rights relevant to our product or process. To do so, we should first identify the relevant technology area and any key technical features of the product or process being evaluated.
2. Gather The Relevant Patent Data
Since we are mainly looking for existing patent rights in a territorial jurisdiction, we will conduct a prior art search based on the technical features of our product or process that we identified in the previous step.
Based on identified technical features, we can now search for patent and non-patent literature, including industry resources, in various databases. For example, you can search free patent databases like Google Patents and Google Scholar.
If you want to learn search from beginner to pro level at no cost then we have specifically crafted an ultimate guide for you. Check it out: Prior Art Search Free Guide 101: Do it Yourself
We also have written detailed guidelines for searching for patent and non-patent literature on Google Patents and Google Scholar. In case you are interested in learning more about patent searching, you can refer to the links given below:
For FTO project, we need a thorough search because, as business owners, we can not risk missing even a single patent.
Therefore, we may have to hire patent professionals who use paid databases for searching patent and non-patent literature.
If you are a patent professional, then the question is “which patent and non-patent literature are you going to look for and include in your report while conducting an FTO search and analysis?“
What a project demands may vary from project to project, however, it is good to know what are those demands and what are the reasons behind those demands.
In general, we look for the following documents in a typical FTO search and analysis project:
- Any existing active patent in the territorial jurisdiction of product launch,
- Any published patent application in the territorial jurisdiction of product launch,
- Any PCT phase application about to enter into that territorial jurisdiction of product launch,
- Any lapsed patent that has a possibility of revival as per the law of the land,
- Any abandoned patent application that can be revived in a prescribed time frame as per the law of the land,
- Any expired patent relevant to our product or process to know what is available in the public domain.
- We search for expired patents because active family members of the expired patent, if there are any, can pose a risk.
- We can look for other active patents or patent applications from the inventor or applicant of the expired patent because it is likely that they have other patents relevant to the technology of the expired patent i.e. ultimately relevant to our product or process.
- Any relevant non-patent literature (research papers, journals, exhibitions, public reading in front of a learned society, etc.) published within the last two to two and half years. But why?
- That is so because, in many countries or jurisdictions, there is a provision for a grace period. For example, in India, one can disclose his invention to the public in ways decided by the government and then can file a patent application within 12 months of such disclosure. We have explained about public disclosure and the grace period in India here which you may want to checkout.
- If the inventor (or applicant) decides to use the provision of the grace period in India and then he can do so by filing a provisional specification at the end of the grace period i.e. 12 months.
- In such a case, the patent application would normally become public or be published after 18 months from the filing date of the provisional specification (subject to the filing of the complete specification).
- So, you can do the math to know how far back you need to look at the non-patent literature because every country/ jurisdiction has different timelines.
- When we are looking at the granted patent literature, we generally look for the patents granted in and active for about the last 20 years so as to ensure there is no existing patent that can challenge the launch of our product or process.
- This duration varies from jurisdiction to jurisdiction. We also have to take the “term of extension” provision into account in some jurisdictions like USA.
- We only focus on claims of existing patents in FTO search but why?
- That is so, because, only the matter covered in claims is protected under the patent law and not the matter covered in the whole description.
- What about the patent applications that have been filed and not yet published?
- It is a practice among patent offices that patent application data is made public only after publication. Normally, it takes 18 months from the filing but it can happen early as well with the provisions like “early publication”.
- So, there is no way to find out before publication whether there exists a potential patent application that can challenge our product or process for infringing on it.
- Damages because of the infringement are calculated from the date of publication because before publication we don’t know if we are infringing on a patent right.
- But what happens when we invest significantly for example in establishing a manufacturing factory before the publication of an already filed patent application? We can license it, acquire it, negotiate a deal, pay damages, or design around it if possible, etc.
- That is why to avoid such a situation to some extent, we conduct FTO search at regular intervals say every 6 months to stay updated about potential IP challenges.
3. Analyze The Collected Data For Potential IP Issues
After the data has been collected by searching and reviewing, it’s time to analyze it to identify any potential patent infringement issues.
As we have already seen, we review claims of patents or patent applications in order to check whether the features of our product or process are susceptible to infringement.
If we are able to identify any potential claims of patents or patent applications that our product or process is infringing on, the next step is to assess how challenging the risk is.
4. Assess The Risk of Infringement
In the last step, we have identified if we are infringing on patent rights of someone. If that is the case, In this step, we assess how challenging the risk is. Assessing will include considering potential consequences if our product or process is proven to be infringing on the patent rights of someone else.
This may involve ‘considering the strength of the relevant patent rights in a jurisdiction’, ‘finding out how strong a patent is’, and any potential defenses that may be available, for example, ‘can the patent be revoked or invalidated?’ etc.
5. Make A Decision
Now that we have identified the potential patent infringement by our product or process and assessed the gravity of the risk, It’s time we make a decision.
We can decide to proceed with the development of our product or process, modify it to avoid patent infringement, or abandon the project altogether.
We may also have to obtain a license or permission from the owner of the relevant patent rights in order to continue.
It is to be noted here that such licensing or legal agreements may ultimately impact our product or process.
6. Document The FTO Search And Analysis
An FTO search and analysis project can minimize potential risks to your business, but by no means does it guarantee your freedom to operate. Because there is a possibility that you may miss one or more patents that may cause problems in the future. Another risk is from the patent application that has been filed but not yet published while you launch your product.
The best you can do is conduct an exhaustive FTO search and document the whole process, including any decisions made and any actions taken as a result of the search. This documentation can serve as a valuable reference in the event of any future IP disputes.
Now that we have seen various steps of performing FTO search and analysis, we hope your understanding about the topic FTO is complete with the reading of Explained: Freedom To Operate (FTO) Search With Examples.
If you are a business owner, we wanted you to know how FTO search and analysis can save your business from potential risks. If you are here out of curiosity to learn about FTO then, we wanted you to know every aspect of it and give idea about how you can conduct FTO search yourself and even become IP professional.
You can continue learning about intellectual property on our HavingIP platform from here. Happy learning. Cheers.