As a CEO, a risk that everyone should be aware of when embarking on making a product is to ensure that the product is not likely to infringe an existing patent. This can be a complicated process without the help of an experienced intellectual property attorney. The value of going through this process, however, is essential because being hit with a patent infringement lawsuit a lead to costly expenses in terms of defending it and paying out possible damages or a settlement award in the event that you are not successful. A freedom to operate opinion can be beneficial in this way.
Defining Freedom to Operate
Freedom to operate, frequently abbreviated as FTO, refers to determining whether or not a specific action, like commercializing a product or testing a product, could be done without infringing on someone else’s existing IP rights. Engaging in this process is important for developments in multiple different industries.
Intellectual property rights are associated with different jurisdictions, which means that a freedom to operate analysis must always include particular regions or countries in which you intend to operate. If you want to commercialize a new variety of something in your own country, for example, you might have to complete the freedom to operate process to ensure there are no existing patents, trademarks or other intellectual property rights that cover the process used to covering the item itself or the way in which you wish to market within your country. However, you might not have the same freedom to operate if you choose to export this product to another country where other IP rights or patents may exist protecting someone else. A freedom to operate helps in identifying patents that your product may infringe.
If such patents are identified through this process, you can try to design it around the patent or enter into licensing negotiations or even attempt to acquire it. On the other hand, if you feel that the patent is too broad and should never have been granted, you can commission an invalidity search to determine if there is prior art that renders such a patent invalid. If such a search yields good art, you can institute proceedings at the PTAB to try and invalidate the patent.
Ensure that the Patent is Not Available
This is akin to a first strike against the potential lawsuits. In the event that you identify a patent application or patent within the database during your search that seems to be connected to the material or process for which you want to obtain freedom to operate, you can’t immediately conclude based on this that there is no FTO because there are multiple reasons that the matter claimed inside the patent could be appropriate to use. These include:
- Patents are a limited monopoly and may have expired.
- The patent might not have been awarded in some of the countries where the applications were made.
- Patents may not have been applied for in numerous countries.
- The acclaimed matter can only be protected where a patent has been filed and approved.
- Patents that were issued may not still be enforced if the patentee has not made any regular payments that are due to the government.
- Certain countries have exemptions for particular actions. For example, Germany is working on a research exemption and New Zealand also has exemptions for certain clinical trials.
If you request an attorney to submit an FTO opinion, this may initiate his or her process of finding IP rights, expiry dates, issue jurisdictions and other key information. Most frequently claimed materials in a specific patent could be rendered invalid because of the prior art exemption. If there are actual intellectual property rights tied to someone else that could be infringed by an action you intend to take, you may be eligible to negotiate for a license in this particular situation. An FTO can also serve as a patent landscape report to inform a CEO about patents in the field of endeavor. This can inform future product development efforts of the product itself and patenting efforts as well because a CEO will now be aware of the white spaces in the industry that are ripe for product innovation and patenting.
As you can see, there are numerous different benefits to retaining an intellectual property attorney who has extensive experience in putting together freedom to operate opinions. Consulting with a knowledgeable lawyer early on in the process gives you the best possible chance for obtaining clarity and understanding what to expect going forward.