Freedom to operate search refers to the process to determine if it is commercially safe to sell or make a new technology or product in a specific country or countries all across the globe with no infringement of the third party rights. For example, you have designed a new lamp and want to sell it in the UK, then to make sure that no other company or individual is selling that lamp in the UK, you have to carry out Freedom to operate or FTO search. Suppose there is already a registered inventor in the force. In that case, you can stop the invention or start paying the royalties or damages to prevent you from any infringement lawsuit and becoming sued by that company or individual.
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How To Precede FTO Search And Know When To Stop?
To minimize the infringement risk, it is compulsory to conduct an FTO search to examine the existing IP on the same design, technology, or product. Search and scale your discovery in the rating of 0 to 100%. If your invention is at 0%, then there is no chance of proceeding with that discovery as third-party invention risks are the highest here. Whereas, 100% result indicates that you have completed an exhaustive and significant amount of FTO analysis and research. You cannot achieve 100% results through FTO in reality.
The FTO research work depends on several factors, but a specific guide will help you estimate the cost of developing the product and introducing it to the market. If you are interested in making any significant investment, then we will always suggest you carry out an FTO analysis and search at the early stage.
How To Minimize Or Avoid The Risk Of Freedom To Operate Search?
To get the necessary certainty degree in the FTO, you will require a relevant IP. It will require trademarks, patents, or the other IP rights that are present in the country or the continent where you want to sell your design, technology, or product. You also need to consider that such rights will offer infringement risks or not. Then you can focus on the patents, but remember other unregistered and registered patents might already exist. There are different ways through which you might reduce the burden. You can appoint a professional to carry out this task while minimizing the missing primary risk of the third-party IP and also avoid any irrelevant IP analysis. Below are the options to maximize the FTO search effectiveness while keeping the costs low.
- Limit the search to some primary competitors in their technical segment. It will also decrease the cost significantly and will result in rapid gains to enhance the certainty of the FTO.
- If you require more certainty, then you go for more detailed and expanding searching later on.
- Limit the Freedom to operate a patent search to the particular countries where you want to intend to remain commercially active. If there is more than one country, then you might want to decrease the search to the primary territories where there might be different protection in force. For instance, if the competitor includes no patent rights in the US or Europe, then there might be no individual protection rights in another country. The chances are even low in the case of any medical device.
Things To Consider While Conducting An FTO Search
When it comes to the question of conducting an FTO, you must make sure about the following things:-
- Consider analyzing and searching for new technology, product, and patent at an early development stage.
- Consider the low hanging fruits at first while conducting an FTO search. Think about your chief competitors and their technical field that will restrict your searches according to this.
- Understand where the third party rights got pending or granted and consider proceeding with the invention accordingly.
- Check the FTO certainty level you will need based on the Freedom to operate search costs and the effort that will be necessary to take your discovery to the market.
- Restrict the search to the primary markets.
- Always engage a professional. The FTO search cost depends on the requirement of certainty and can reduce this while working with an expert.
If you file for a patent application, then the USPTO will publish it after almost 18 months from the month of application. This initial publication of the patent is called “A” and is directly related to the pending patent application. Only when the patent gets accepted by the patent office like USPTO, then the new technology will progress to the patent that is already granted. Then the patent examiners will republish as the “B” publication that will define the rights that you can enforce on the patent. Thus you should identify the already registered or granted patents rather than the filed application. However, you cannot enforce the applications until the patent office has granted it to you. They might raise their problems since they might cause some uncertainty about the protection scope that you might eventually obtain.
The idea of a 100% FTO patent search can never be true. There will always be some risks of infringement lawsuits, no matter how to detail the search is and how you have carried it out. There are exceptional implications of the IP infringement that will result in a hearing before the judicial court. Never ignore any correspondence from the holder of the right when the situation worsens. Possible scenarios will resolve all the circumstances to take a design, a product, or a technology to avoid any scope of IP for future inventions. It will even show that the right to enforce IP is invalid. Each alternative comes with different costs that remain attached to it.