What’s the point of freedom to operate searches?
It’s easy to confuse patentability and freedom-to-operate (FTO) searches. If you’re going to get a patentability search report as part of your patent application process, why do you need to pay extra for another search? This article will explain the differences between the two and how FTO searches can save your business time and money.
What does an FTO search show?
An FTO search shows if there are any granted patents you may infringe if you bring your innovation to market. The search exhaustively reviews each element of your innovation, such as mechanisms, materials and electronics, against other patents in your region of interest.
A patent attorney will review the search report and give you a legal opinion on how to redesign your product so it doesn’t infringe other patents. By doing this, you can reduce the likelihood of any unexpected litigation claims against your business.
How is this different from a patentability search?
The main difference between patentability and FTO searches is what these reports are looking for.
FTO (or infringement) searches are exhaustive and look at all the different elements of a product or process to see if it could infringe existing patents when brought to market.
Patentability searches are broader in scope. They pull up any other published patents and applications that have similarities to your innovation. Some of this information may be irrelevant, but it gives you and your patent attorney an indication of whether your invention meets the two requirements of patentability - is it new and is it inventive?.
For example, a patentability search for a new drilling system will review other patents to see if any published innovations work in a similar way. An FTO search will look at the specific materials, construction and mechanisms or electrics used in the system to see if there are any patents this product could infringe if brought to market.
There are some other key differences between the two, these include:
The age of patents reviewed. FTO searches only identify patents that haven’t expired (younger than 20 years old), patentability searches can pull applications older than this
How specific the information is to your patent. For example, FTO searches will only pull applications from the markets you’re looking to manufacture or sell your product in, while patentability searches can highlight ones from any country
The timing of these searches. Patentability searches are run early in the process to see if an application is viable before too much investment is made. An FTO report is done at any time, but usually when the innovation has been developed and the product design near finalised
Why do you need an FTO search?
Patentability searches give an early indication of whether your patent application is likely to be granted or not. This is a required part of the process. Undertaking a pre-filing patentability search means you don’t waste your business’s time and money filing a patent that won’t be granted.
However, a new product, even if patentable, can still infringe other patents when brought to market.
FTO searches can help you avoid this infringement by:
Identifying other patents that your innovation might infringe on if brought to market
Reviewing patents within your specific market and geographical region of interest
Helping you understand if you have complete freedom to operate in the way your business intends to
In short, FTO searches help you avoid any unexpected and expensive litigation claims.
Though patentability searches could pull up an issue for FTO, they aren’t as comprehensive. As such, it would be dangerous to rely on them to protect you against any litigation and may cost your business more time and money later down the line.
So, to launch your innovation with total peace of mind, we’d recommend running an FTO search and taking this extra protective step against litigation.