Five questions to be answered before a Freedom-to-Operate search

German and European patent, trade mark and design attorney Olaf Ungerer, a partner in Munich, has undertaken numerous freedom-to-operate searches on behalf of clients.

 

He encourages innovators and to discuss these key questions with their IP advisor in advance, ‘This will help your patent attorney to keep the search effort of the FTO analysis to a minimum, thus increase its efficiency and ensuring value for money.’

 

• What is the scope of development and what are key features, commonly known features, detectable features, and new features of the target project?
  Clarity will ensure that the critical search object and its technological environment can be identified, preferably in close coordination with the responsible developers.
• Are previous FTO opinions on this or a similar search object available?
  If so, previous search strategies, search runs, or search parameters (e.g., key words, patent classes etc.) can be used as a starting point for the new search.
• Are any own or third-party patents or other IP rights known for a partial aspect of the project?
  If so, related features of the search object can be modified in advance (circumvention of third-party rights) or excluded from the search (own patent or license rights or technology transfer).
• Are there any indemnification clauses in related supplier contracts?
  If so, related features could be excluded from the search object (depending on the trustworthiness of the supplier), as the supplier is responsible for the related FTO analysis.
• Is any free state of the art available?
  About 90% of all searchable patent literature is no longer protected (expired or abandoned). This provides a vast reservoir of circumventing solutions to replace features of the target project and thereby reduce the FTO search effort.

 

By way of an example, an investor required an FTO analysis in regard to a startup company that intended to start mass production of a measurement system, using known components from renowned manufacturers.

 

In the course of a first FTO search, a scientific publication that was over 20 years old was discovered, that disclosed a similar measurement system which did not differ in a disadvantageous way from the planned measurement system. Due to the age of its publication, the published measurement arrangement could no longer be protected by a patent and thus can be considered as free prior art.

 

The startup company therefore decided to modify its own measurement system to be identical with the published one. In addition, the startup company obtained an indemnity from the manufactures for the modern detectors and signal generators used in the modified measurement system. Consequently, a further FTO search was no longer required.

 

How we can help

In critical high-value cases, an FTO opinion should be ordered from an external law firm due to their broader range of experience and high professional liability insurance.

 

Our attorneys are experienced in conducting FTO searches and providing supporting details to explain, analyze, illustrate, or develop key information in an FTO opinion.

 

Please get in touch if you require further information about a freedom-to-operate search.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in March 2023.