Vitaliy Orikhon
Patent Counsel for IPR GROUP
As is known, the main advantage of the patent holder is exclusivity to produce and sell goods and services according to the patented method and/or device or substance. The registered patent gives the holder a market advantage. However, in order to estimate and understand the potential of the object, similar patents “the patent environment”, should be analyzed with a conclusion on the limits of freedoms & advantages the patent holder has on the market with this object. Understanding these limits, is the concept of Freedom to Operate (FTO) for the patent holder or potential Licensee of the patent.
An FTO Assessment is necessary for risk analysis and competitiveness for further action. It is also an opportunity to assess the potential actions you can take with a registered patent without infringing on the valid intellectual property (IP) rights of third parties. FTO Assessment is also necessary before entering into a new market in countries where the product/service will be commercialized. All these types of analysis fall under the definition of FTO Assessment.
The FTO is also valuable in the early stages of business development. If there is a possibility of a third-party patent infringement, amendments to the application specification can be made to avoid possible conflict. During the analysis of the state of art regarding your potential invention, features that haven’t been fully explored on the market can be found and also used in drafting of the new application.
With this strategy, the FTO search may create added value by discovering new, untapped features, while reducing any chances of being in further conflict and possibly facing infringement.
We can therefore conclude that the FTO is an analysis of the environment of the patent of interest, which essentially estimates the possibility of commercializing the invention on the market without violating IP rights and acting within the maximum coverage of the current patent.
A standard FTO should contain the following sections:
Analysis of the patent of interest and the state of the art materials of the specific object/method of the invention, the purpose that it follows, and the parts that it consists of. It is important to note that the complete features of the claims, dependent and independent claims, should be analyzed. However, it should also be taken into account that there might be situations where some parts of the object are not protected by the claims, because some possibility of use or result of the object can be described as an alternative in the application materials but not as disclosures in the claims. The invention should be broken down into all its constituent elements (specific units, materials, and processes involved in the object’s production or sale).
The search for patentability criteria and the search for FTO assessment are similar, and are conducted in relation to the claimed object. However, the subsequent approach to the analysis of search materials is different. The search for patentability focuses on the patent from the state of art in order to find out what new inventive is proposed. The FTO search focuses on the cross-platform comparison of the feature of the objects to analyzing similar and distinct parts of invention.
In this analysis, it is necessary to summarize the results and indicate the invention’s possible scope without violation of third-party patents. A “literal violation” is established when all the features specified in the claims are present in an already existing patent. Based on the conclusion, the Patent Holder or potential User of the patent can build a commercial prediction concerning the patent object’s use and detail their potential in the market.
The FTO can be conducted for one country or a number of countries for the subsequent implementation of the invention or countries’ list. It is the same approach for any jurisdiction due to the similar grounds of patent law in several countries, whether in Europe, Asia or America.
To summarize the information above:
When determining the approach to FTO, it is necessary first of all to start from the understanding of the object to which the invention relates. The objects of the invention may be a device, method, substance, strain of a microorganism, cell cultures of plants and animals, as well as the use of a previously known device, method, substance, strain for a new purpose.
For a device, the following should be analyzed and covered:
For a method, the following should be analyzed:
For a substance, the following should be analyzed:
For a strain of a microorganism, the following should be analyzed:
For cell cultures of plants and animals, the following should be analyzed:
It is necessary to summarize that the FTO assessment should be drafted by an expert in the field of technology, and result should be supervised by a patent attorney who is familiar with the nuances and processes from drafting of the application to possible litigation in the jurisdictions of the FTO.
