Will you infringe when your product launches?
Bringing a new product to market involves more than designing, manufacturing and marketing it. Before you launch, it’s worth asking another important question: are you free to do so? A Freedom to Operate (FTO) search, also called an Infringement Clearance search, helps assess whether your product could infringe someone else’s intellectual property rights, allowing you to identify and manage potential risks before they become costly problems. This article will focus on Freedom to Operate searches carried out in respect of patent rights.
What is a Freedom to Operate search?
A Freedom to Operate search looks for existing patents that could prevent you from making, using, selling, offering to sell, importing or keeping your product in a particular country. If relevant patents are identified, they should be carefully reviewed to assess whether your product is likely to fall within the scope of the patent claims and, if so, what level of commercial risk they present.
The appropriate next steps will depend on the outcome of that assessment. In some cases, it may be possible to obtain a licence from the patent owner or challenge the validity of the patent. In others, it may be advisable to modify the design of the product to avoid infringing the patent, particularly if no commercial agreement can be reached.
Doesn’t having my own patent give me freedom to sell my product?
One of the biggest misconceptions about patents is that owning one automatically gives you the freedom to sell your product. In reality, whilst a patent gives you the right to prevent others from using your invention, it does not necessarily give you permission to commercialise your own product.
Imagine you invent an improved coffee machine and obtain a patent for your innovation. Although your improvement may be protected, the coffee machine could still incorporate technology covered by someone else’s earlier patent. In that situation, you may need permission from the owner of that earlier patent before you can manufacture or sell your product.
When should you have a Freedom to Operate search carried out?
A Freedom to Operate search is typically most valuable once your product has reached a relatively mature stage of development and you are approaching a key commercial milestone. Common trigger points include:
- launching a new product;
- making a significant investment in manufacturing or production;
- entering a new geographic market; or
- seeking investment, acquisition, or commercial partnerships.
Timing is important. Conducting a search too early may provide limited value if the product design is still evolving, as any significant changes could alter the patent risk profile. On the other hand, waiting until after a product has been launched may leave you exposed to avoidable legal and commercial risks. In most cases, the ideal time is shortly before major commercial commitments are made, when the product is sufficiently defined but there is still flexibility to address any issues identified.
What will the results tell you?
The outcome of a Freedom to Operate search is typically a written report identifying patent documents that may affect your ability to make, use, sell, offer for sale, import or stock your product.
The report will highlight the patents that appear most relevant to your product, but these should then be reviewed in detail to assess the level of risk they present. In many cases, a patent that initially appears problematic may, on closer inspection, not cover your product at all, and your product may in fact fall outside the scope of its patent claims.
This enables you to make informed commercial decisions and, where necessary, make changes before committing to manufacturing or launching your product.
Does a Freedom to Operate search guarantee I’m safe?
Patents are continually being filed, published, granted, amended and revoked, meaning no Freedom to Operate search can provide an absolute guarantee that infringement issues will never arise. In addition, no search can guarantee the identification of every potentially relevant patent document.
As a result, there is always a possibility that an undiscovered patent could exist which may affect your ability to make, use or sell your product in the relevant jurisdiction. However, as in many aspects of business, a certain amount of commercial risk will need to be accepted when considering Freedom to Operate.
Is a Freedom To Operate search worth it?
A Freedom to Operate search is a valuable investment for many businesses. It helps to identify and assess potential patent risks before significant resources are committed to developing, manufacturing or launching a product. By understanding those risks at an early stage, businesses are better placed to make informed commercial decisions and avoid costly surprises later on.
The cost of a Freedom to Operate search is often relatively modest when compared with the expense of redesigning a product after launch, delaying market entry, or responding to a patent infringement claim. It can also provide reassurance to investors, manufacturers, distributors and other commercial partners that intellectual property risks have been properly considered as part of the product development process.
Final thoughts about Freedom To Operate searches
A Freedom to Operate search will not tell you whether your invention is sufficiently new or inventive to obtain patent protection. Instead, it addresses a different, but equally important, question: whether your product can be made, used or sold without potentially infringing the patent rights of others.
If you are preparing to commercialise a new product, seeking advice from a patent attorney and considering a Freedom to Operate search before launch can help identify potential risks at an early stage. Doing so may save considerable time, expense and uncertainty further down the line, allowing you to move forward with greater confidence.
Author
