FTO search, also known as a “clearance search” or “right to use” search, is a kind of search commonly performed to assess patent infringement risk upon new product launch. FTO analysis can save companies from many legal disputes, when it is done in advance, specifically, before launch of the new product. Patent filing is increasing globally and before any new product is manufactured, launched or sold in the market, it is important to thoroughly check the existing patents to be sure that none of the product components infringes upon or encroaches upon claims of any existing patents in a specific jurisdiction.
Before we understand relevance of FTO search, it is important to understand meaning of Patent infringement, which, in simple words means violation of patent rights in the country or jurisdiction where the patent has been granted. When a patent is granted, the patentee gets the right to prevent third party (ies) from making, using, selling, offering for sale or importing the patented product in the country where there is patent protection. Patent infringement happens when any third party, makes, uses, sells, offers for sale, or even imports a product or process claimed in the patent, without consent of the patent holder.
Purpose of FTO search is to assess the likelihood of patent infringement upon launch of new product in a specific country. The best time to do FTO search is at the time of designing the new product because its is easier to make changes in the product specifications and the infringement risk can be minimised or nullified easily at early stage of product development.
FTO search is performed by extracting all relevant patents in a specific country or jurisdiction where the product is to be manufactured or sold. Unlike patentability search, FTO search is limited to patents that are ‘in-force’ i.e. active and does not include patents which are abandoned or expired. However sometimes, looking into abandoned or expired patents also gives important insights and hence it is worth going through such patents quickly. Further, the FTO search is not confined to granted patents, but also includes patent applications because such patent applications may be granted in due course of time and may become a hurdle at the time of product launch. It is also required to keep track of patent applications periodically to track if they get granted or not.
FTO search is a very specialised investigation and analysis of patent documents, done by a skilled attorney, who possesses a good working knowledge of technology as well as law. The final opinion on infringement shall always be rendered by an advocate according to the laws of the jurisdiction. Generally, following steps are taken up to perform FTO analysis:
Steps to perform FTO search are as below:
Step 1: Product for which FTO has to be performed shall be segregated into finer components because there may be patents of other companies for such components and hence extracting patents for all components is important.
Step 2: Nomenclature of all components, as generally used in the industry, shall be listed sothat it is easy to formulate key words for the search as search shall be performed for each and every component.
Step 3: Patent search shall be performed for each component of the product with a timeline of around 22 years in the specific country for which FTO is required to be performed. For example, if the product is to be launched only in India, patent search may be confined to India. However, it is recommended to search in Patentscope database of WIPO also because there may be existing patent applications that might enter India at the time of PCT-national phase filing.
Step 4: Results of prior art search shall be categorised into In-force, Expired, lapsed, Abandoned patents and patent applications. For FTO search, “In-force patents” are most critical to be analysed. Additionally, monitoring “lapsed patents” from time to time is very important because they have a chance to be restored and become active again.
Step 5: Claims of patents, shortlisted in step 4 shall be compared with the product to be launched and claim charts shall be prepared for easy understanding of the extent of overlap. Claim charts give clarity on extent of overlap between product components and patent claims,
Step 6: Based on results of first 5 steps and claim charts, opinion on patent infringement shall be written based on laws of the country where the product is going to be launched. FTO report shall preferably be signed by an advocate.
VirnetX is an internet security software and technology company based in Zephyr Cove, Nevada. This company’s patent portfolio includes American and international patents in areas such as DNS and network communication. Since 2010, VirnetX has been involved in litigation with big companies like Apple, Cisco, Microsoft, etc. In December 2014, Microsoft and VirnetX settled patent disputes over Skype technology for $23 million. VirnetX, in another law suit with Apple was awarded $368 million in damages for FaceTime infringement.
FTO search is highly recommended to be performed by the companies before new product launch sothat patent infringement risk can be assessed and timely steps could be taken to mitigate it.
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Origiin, with a skilled team of patent agents is one of the best patent companies in India offering patent services like, patent searching and patent filing in India and foreign countries. We perform Freedom to operate analysis for all kinds of technology-based products as well as for the drugs for Para IV certification. We provide detailed jurisdiction based FTO report along with bypass options to help companies operate in safe manner by minimizing or mitigating IP or patent infringement risk.
Deliverables: FTO report with opinion on patent infringement risk in PDF, claim charts along with PDF copy of all prior arts listed in the report
Timeline: 8-10 business days
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