You came up with an amazing invention, patented it and now you want to make money out of it. But hold on! Conduct the freedom to operate search. A Freedom to operate or FTO search ensures that a product does not infringe valid, in-force patents held within a country.
Unlike patentability search, freedom to operate search looks only at patent information and focuses on the claims of existing patents.
Freedom to operate search – importance after patent grant
The patent grant gives you the exclusive right to stop others from making, using or selling your invention for a limited period of time. But, if your invention has something in common with a third party invention, then they have the same exclusive right over the technology as you. That is, you are not the sole manufacturer and distributor of that particular technology. In other words, you don’t have , freedom to operate.
Let us understand this with an example. Let’s say that you invented an attachable eraser tip to a pencil, and got a patent for it. But the pencil to which it attaches is not invented by you, and someone else holds a patent for it. Then, in this case, you won’t be able to manufacture and sell eraser tips without infringing the original pencil patent, hence, no freedom of operation.
Important Considerations before an FTO Search
An FTO analysis invariably begins by searching patent literature for issued or pending patents. This also involves taking a legal opinion as to whether a product, process or service infringes any active patent(s). Some important considerations for FTO search are:
- Clearly, describe the essential features of a product or process for which an FTO search is being conducted.
- Separately search all the features of the product or process.
- It is only the claims that determine the scope of the patent. Whatever function the invention performs or wants to claim patent protection for is there in the claims.
Related Articles: Patent Search Techniques to expand your horizons.
Way outs for Freedom of Operation
If you find an already active invention blocks your freedom of operation for your invention, don’t worry there are solutions to it. Let’s look into them one by one.
- Wait for patent expiry: wait for a while and let that active patent expire. The duration of patent protection is 20 years. But, patents are difficult to upkeep and therefore, some of them expire before time because of the high maintenance fee. Also, the time reduces due to hefty prosecution at the USPTO. Freedom to operate search identifies such patents and provides opportunities to improve these technologies as per the current product or processes.
- Patent licensing or selling: this is comparatively an easier way of achieving the freedom to operate. In licensing the original patent holder gives permission to use their patent. The other option here is, if the original patent holder sells his active patent to you, this gives you the complete hold over the invention.
- Invent around: this is the best way to achieve freedom of operation. To invent around is to adjust your patent claims to sidestep claims that are clashing with an active patent. This technique is enforceable for a patent with narrow claims.
Let us serve you better!
By now you must be familiar with the concept of freedom to operate search. If you are looking for experienced professionals who can help you with FTO searches for commercializing your technology, then TPSF is the right choice for you. At The Patent Search Firm (TPSF) we have experts with 10+ years of experience in the patent industry. Our reliability reflects in our work. We have a full-time search and FTO search coverage in 16+ languages and 30+ technical domains with clients in more than 100 countries. You can find our comprehensive search reports samples free of cost by making a little inquiry.
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Patent Filing Requirements in USPTO – in a Nutshell
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