A patent search and a freedom to operate search are important aspects while dealing with intellectual property rights. Yet, both are often misunderstood and used interchangeably. Therefore, it is an utter need to understand the drastic difference in literal as well as logical meanings of both, in terms of money and time.
Patent search is performed to analyze whether an invention follows the basic guidelines to obtain a patent, such as novelty, etc., whereas freedom to operate search focus on analyzing whether there is a risk for being sued for infringement. Let’s have a look at both the terms and understand each of them in detail.
Sometimes known as ‘novelty search’, is a search for entrepreneurs and startups that match with the proposed invention, to figure whether the proposed invention is meeting out the basic five basic requirements of acquiring a patent, through searching for similar prior art disclosures. Those basic and essential requirements are novelty, non-obviousness, clear expression in writing, legal acceptance, and commercial applicability. After all such requirements are verified, it is determined that whether the inventor must move forward with the expense of preparing and filing a patent application or withdraw the thought of patenting. In terms of costs, the analysis part costs around $500 to $3,000 which may vary depending upon the inventor’s budget and his/her analysis requirements.
Amendments can be made on the basis of the suggestion given by the patent examiner as improvements for the existing work. Thus, the goal of a patent search is not to assure that there is no relevant prior art that will become a hurdle in patenting, but rather to examine whether proceeding with the expense of a patent application makes sense given the rights that can likely be gained.
To know more about Patent Search Techniques follow the link.
Freedom to Operate Search
“Freedom to operate” means the freedom to operate or work on a particular product, without affecting, disturbing, or infringing the intellectual rights of others. The basic aim for conducting a FTO is, to get an idea about the in-forced or published patents having approximately similar claims to that technology, process, or product; one is planning to target, to identify potential patent barriers. It examines the claims language of the third-party and in-force patents, as a means of evaluating the risk of possible infringement.
Basically, its main purpose is to analyze how to avoid patent infringement. This completely revolves around the patent claims to check if the current product or service omits at least one element of each independent claim in the patents searched, which generally requires more time and cost (approx. $10,000) to analyze. Since it’s a loop-based approach it costs a lot more than the patent search.
Want to have a look at our FTO Sample Search Report? You can get it here for free.
Patent Search vs Freedom to Operate FTO Search: EXAMPLE
Consider these two scenarios:
- Scenario 1: (Understanding need of FOT)
Condition: Not filing any invention.
Focus: Interested in manufacturing or selling the product (Commercialization).
Action: Check freedom to operate by knowing about infringing patents and comparing the claims of patents granted to others.
- Scenario 2: (Understanding need of Patent search)
Condition: Filing an invention for a patent.
Focus: Application must follow patent laws, such as novelty, non-obviousness, etc. (Getting Patent)
Action: Compare claims of the invention with already published patents.
The most important aspect is to extract the right search and opinion that suits the objectives of the search. If it is all about manufacturing or licensing a novel idea, then the patent search can serve the matter, whereas if it is more likely about getting into the market with competitors, then a freedom to operate search can prove meaningful and can help in guiding the sales accordingly.
Features and Benefits of Freedom to Operate Search
There are some key features of FTO, which are listed below in detail:
- Validation: FTO varies from one geographical area to another depending upon the governing laws of that country. For example, commercialization of a hardware product may have the freedom to operate in one country and may not be in other, since the other country already has a patent issued for that product.
- Patent Database: They are very important to decide whether the product (or the invention, if valid) holds the right to operate in that particular jurisdiction or not. If the product or the claims made for the product are already found in the database, then there is no freedom to operate that product in that judicial boundary.
- Claimed content: FTO is permitted in countries where the claims for the product or the invention do not exist.
- Non-granted patents: FTO is permitted in countries where patent similar to the current approach (invention) has been applied but not granted in the past.
- Payment delays: FTO is permitted in countries where the patents have the grant but cannot be treated as valid since the patentee has not made regular payments.
- Patent expiration: FTO is permitted in countries where the patent (or the current invention) similar to the already existing one, has already been expired.
- Exempted clauses: FTO is permitted in countries where the patent (or the current invention) similar to the already existing one, holds clauses which are exempted from the clause found in already existing one.
- Licensing: If the current product or invention is infringing the existing patent claims, then freedom to operate can be obtained by mutually negotiating for a license with the previous owner of IP rights. In some cases, if the applied patent is infringing patent claims of more than one owner of IP rights, then one has to take a series of patent licenses to get the freedom to operate within that area.
- Advise: It is better if help from an experienced and skilled attorney is taken since it’s easier for them to locate IP rights, expiry dates, issue jurisdictions, etc.
FTO is beneficial in the number of ways, as listed below:
- To maintain the clearance of the applied products, processes, or technologies,
- To uncover licensing needs
- To provide direction for the product development programs
- To conduct patent infringement risk assessments
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