In the realm of technology, where every innovation holds the promise of transforming the future, the stakes are incredibly high. Picture a bustling tech startup, brimming with big ambitions, as they develop a self-driving car system. The team, led by the erudite engineer Alex Chen, had crafted an ingenious Thermal Imaging system that could revolutionize the automobile industry. The air was thick with anticipation as they neared the launch date. But just as they were about to unveil their masterpiece, a legal notice arrived, casting a dark shadow over their aspirations.
What went wrong? In their rush to innovate, they overlooked a crucial step: conducting a Freedom-to-Operate (FTO) search. This oversight threatened to derail their project, serving as a classic patent infringement example and underscoring the vital importance of FTO search in industries that thrive on innovations.
What is the meaning of “FTO search,” and why is it so crucial for innovative industries like biotechnology, pharmaceuticals, or engineering? We’ll explore this critical process in this post.
What is an FTO Search?
Freedom-to-operate (FTO) search is a comprehensive study carried out with the intent of whether an innovation—be it a product or service—can be manufactured and marketed without infringing intellectual property (IP) rights, including patents of other innovators.
FTO search is also known by other acronyms like:
- Freedom-to-practice (FTP)
- Right-to-Use (RTU)
- Right-to-Market (RTM)
FTO search and analysis is a clearance study, forming an important element of the product development cycle.
Step-by-step Guide to Conducting a FTO Search:
To do an effective FTO analysis, one must conduct comprehensive searches, carefully evaluate the search results, and do rigorous analysis. All these steps are essential to ensure that a product or technology can be commercialized without getting patent infringement or other such patent litigation notices.
FTO research or infringement search is not only about the technical side of search but also the legal side. Patent rights are jurisdictional. For example, a product or process that does not infringe any patents in China might potentially infringe in India and lead to patent disputes. This is where international patent applications come into play. A Patent Cooperation Treaty (PCT) application allows you to seek patent protection for an invention simultaneously in many countries, providing a streamlined process for global patent filing. By filing a single PCT application, you can delay the decision on which countries to pursue national patent applications in, giving you more time to assess the market potential of your invention.
It’s crucial to note that relevant PCT applications may exist that have not yet entered the national phase in the country of interest. Therefore, when conducting an FTO search, it’s important to consider not only existing patents and applications in the country of interest but also PCT applications that could potentially enter that country’s national phase in the future. This broader scope helps anticipate potential future IP obstacles, leading to better risk management.
Thus, FTO search and analysis is a professional service requiring the need for patent search professionals to have the technical and legal know-how to conduct extensive searching, screening, and analyzing of patents in the countries of interest, including those filed through the PCT system.
Let’s take a closer look at the important steps involved in conducting an effective FTO search.
Identifying Key Features
The first step in FTO research is conducting preliminary patent searches by identifying key aspects of the product or service. Finding key features is like finding the DNA code of your innovation.
Imagine you’re developing a cutting-edge LiDAR system for self-driving cars. Your key features might include the laser emitter, the sensor array, the signal processing technique, and so on. By pinpointing these critical components or features, you’re essentially creating a roadmap for your FTO search .
It’s important to note that these aspects can be described in various ways across different patents and jurisdictions. Consider all possible synonyms and related keywords for each feature, keeping in mind the country or countries of interest for your FTO search. For example, “laser emitter” might also be described as “light source,” “optical transmitter,” or “photon generator” in different patents.
Additionally, when dealing with non-English patents (such as those from Japan, China, or Korea), it’s crucial to consider native-language keyword searches.
Assigning Relevant Patent Classification Code
After identifying key features, the next step is to assign the correct patent classification codes. Think of classification codes in FTO analysis as a way to categorize patents into standardized groups, much like how books are organized by subject in a library.
To understand the jurisdictional coverage and accessibility of these classification systems, here is a breakdown of the main classification systems:
| Acronym | Full form | Jurisdiction | Access type |
| IPC | International Patent Classification | Worldwide | Free |
| CPC | Cooperative Patent Classification | US and Europe | Free |
| USPC | United States Patent Classification | USA | Free |
| FI and F-Terms | File Index and File-forming Terms | Japan | Free |
| DWPI | Derwent World Patents Index | Worldwide | Paid (proprietary) |
Strategic Date Search
Another important element of FTO search is using date filters. Patents generally don’t have validity beyond 20 years. However, it’s worth noting that some patents may receive extensions beyond the usual 20-year term due to valid reasons such as delays in the patent examination process, regulatory approval requirements, or other exceptional circumstances. These extended patents remain enforceable and can pose a risk of infringement, making them crucial to consider during an FTO search.
Expired patents are free to use and do not pose a risk of patent rights violation So, filtering currently active patents (published applications, granted, or extended in the last two decades) would yield more accurate results.
Searching in Different Databases
When performing an FTO search, it’s essential to sift through relevant patent databases. Searching multiple patent databases is essential for thoroughness. Each database has its own strengths, search algorithms, and coverage areas, which can significantly impact search results. Some databases may excel in specific technological fields, while others might offer broader international coverage. By utilizing a diverse range of databases, you can uncover potential patent conflicts that might be missed if relying on a single source.
Miscellaneous Search Options
Besides conventional keyword or classification searches discussed earlier, you can use additional strategies to finetune your FTO searches. They will help you uncover pertinent patents that might be missed through basic searches.
One powerful tool is citation searching. When a new patent is created, it often references other patents that influenced its development. Similarly, once a patent is published, it may be cited by future innovations. By exploring these citation networks, you can identify highly relevant patents that might not appear in keyword searches. This approach is particularly useful for tracing the evolution of technology and identifying key players in your field.
Assignee searching is another valuable strategy. This involves targeting companies, universities, or research institutions known for innovation in your specific technology area of interest. For instance, if you’re working on a cancer treatment, you might search for patents assigned to renowned oncology research centers or pharmaceutical companies specializing in cancer therapies. This method can reveal relevant patents regardless of specific keywords or classifications.
Similarly, inventor searching can yield insightful results. By identifying key inventors in your field of interest and searching for their patents, you can discover many relevant technologies and even gain insights about potential competitors.
These miscellaneous search options, when used in conjunction with the primary search options discussed earlier, can significantly enhance the depth and breadth of your FTO search, helping you navigate the complex patent landscape with greater precision.
Exclusion of Off-Target Patents
In the world of patents, not everything that glitters is gold. Off-target patents seem relevant at first glance but extend beyond the scope of your specific technology. These patents can be misleading and waste valuable time if not properly excluded.
For instance, imagine you’re developing a smart home thermostat with features like Wi-Fi connectivity, motion sensing, and energy usage analytics. You might encounter a patent that claims all these features but also includes an additional element like a built-in air purifier. This patent would be considered “off-target” for your FTO search.
By recognizing and filtering out these off-target patents, you streamline your FTO search, focusing only on the most relevant patents. This approach not only saves time but also ensures a more accurate assessment of the patent landscape for your specific innovation.
Compiling the Findings into a Professional Report
The final stage of freedom to operate analysis is preparing a patent analysis report. The aim of making this report is to communicate and document your FTO search findings in a structured, easy-to-read format.
Wondering how to present your FTO search findings effectively? The format of your report can significantly impact its usability and clarity. While Microsoft Excel, Word, and PowerPoint are common choices, Excel often takes the lead due to its flexibility in handling detailed data.
For a more dynamic approach, consider web-based applications that offer real-time updates and advanced filtering capabilities.
Ultimately, the best format balances comprehensive information presentation with user-friendly navigation, ensuring your FTO insights are both accessible and actionable.
Why Choose SciTech for Your FTO Search
Conducting an effective patent FTO search is a complex process that requires professional expertise. Following the steps outlined in this article—such as searching different databases, using Boolean or strategic citation/date searches, and categorizing relevant patents—can be overwhelming without the right support. This is where SciTech Patent Art comes in.
Our team of scientists and legal experts thoroughly analyzes your product or technology against relevant patents, provides a comprehensive legal opinion on infringement risks, and recommends the best course of action to safeguard your product or process.
We also provide custom reports to our clients based on their specific requirements.
For over 20 years, our team of searchers has been conducting FTO searches for clients worldwide. Our team of searchers are subject-matter experts across a wide range of disciplines in science and engineering. They are well-versed with patent laws of different jurisdictions. We work as per the needs of our client’s timelines and offer pricing to fit their budget.
Choose SciTech Patent Art for your FTO search needs and ensure a thorough, professional, and effective analysis that helps you navigate the complex landscape of intellectual property with confidence.