When inventions are conceived, one of the first actions people take is the performance of a patentability search to determine whether pursuing the invention could be fruitful. People tend to easily understand the value of a patent – they understand the amount of money that can be made if they are granted a temporary monopoly over a winning idea, they appreciate the security that accompanies a valid patent, and they understand that patents strengthen intellectual property portfolios. Yet, while it is easy to see how holding their own patent could be beneficial, it is often forgotten that patents can also be used against them. Ensuring that your company is free to make and sell its products before taking them to market can prevent tremendous heartbreak and financial loss.

The Freedom-to-Operate Search

A freedom-to-operate search (or an FTO search) is a type of patent search intended to confirm that you have a “right to use” your product before taking it to market. A patent holder has the exclusive right to make, use, or sell the subject matter claimed in their patent, and an FTO search is intended to determine that your product falls outside of the scope of protection of any granted, valid, and active patents or pending patent applications. An FTO search is a risk assessment tool based on the always-changing patent landscape and the available patent information. In other words, an FTO search is a method of gathering as much information as possible about existing patent rights in a particular marketplace, and then using the results of the search to make an educated decision about whether the product at issue can be manufactured or sold without infringing on another’s patent rights. This method becomes increasingly important for more complex products with many individual components – any of which could be the subject of a valid patent.

Timing: Launching Your FTO Search Before Your Product

When to begin your FTO search depends heavily on your company’s resources, the anticipated value of your product, and the perceived likelihood that your product could be the subject of a live patent. As a general rule, the sooner you begin your FTO search, the better off you will be. Companies often invest heavily in the research and development of their product prior to taking it to market. Discovering that a patent stands in the way of being able to sell a product forces companies to make a decision to either head back to the drawing board and develop a non-infringing product or to pay the necessary royalties to obtain a license to make and sell the product from the patent holder – the cost of either choice can easily exceed the cost of a preventative FTO search. As a result, if an FTO search is conducted closer to a product’s conception than its launch, a company can either move forward with peace-of-mind, knowing it is unlikely that their product infringes an existing patent, or they can use their understanding of existing patents to direct their research toward non-patented alternatives.

Conducting an FTO Search and Overcoming Challenges

In conducting an FTO search, it is good to keep in mind two things: 1) the goal is to uncover live patents or pending applications that could complicate your ability to make, use, or sell your product, and 2) your search needs to cover every market where you plan to operate. For products that will be manufactured and sold exclusively in the United States, the focus of an FTO search should be live patents and patent applications filed with the USPTO dating back twenty years (in the case of a utility patent). In this case, it is common for searchers to make use of the USPTO’s patent search tools, PatFT and AppFT, which contains all of the available United States patent documents available, but which very few would consider to be efficient or user-friendly.

When looking to manufacture or sell a product in multiple countries, a comprehensive FTO search can be much more difficult. Operating in multiple countries often triggers the need to search the databases of multiple patent authorities. Typically, this requires much more time and comes at a far greater expense to companies. Fortunately, the modern patent search tools found in LexisNexis TotalPatent One® facilitate much more efficient and cost-effective FTO search. TotalPatent One® enables a search of over a 100 patent authorities and 100,000,000 patent documents in a single search from one easy-to-use platform. With TotalPatent One, you can find your freedom, and all of the documents you need, faster and better than ever.

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