The purpose of a freedom-to-operate (FTO) search is to provide to a patent attorney the patent documents needed to render an FTO opinion. That opinion relates to whether there is a legal barrier to commercializing a client’s anticipated composition, process, device, or method of manufacture. The simplicity of these statements obscures the complexity of the overall search process. There are other players besides the attorney to be satisfied, including technical experts and business managers who define the parameters and are the ultimate clients.
Determining FTO is a legal process, conducted by an attorney, with a unique set of requirements and outputs. Searchers must direct their efforts to meet those requirements with a good understanding of the search topic, skilled development of the search strategy to target patent documents with high interest to the clients, and clear knowledge of how to select patent documents that will be needed by the attorney to formulate the FTO opinion. The searcher can reduce the net costs to the ultimate client by finding, selecting, reviewing, and highlighting patent art in order to minimize the cost of the attorney’s time to evaluate the reported references. At the same time, no searcher can be expected to either identify or evaluate every reference or clear every aspect of the client’s planned commercial operation.
The difficulty of defining the search parameters and reviewing candidate references has not been sufficiently emphasized in conference presentations and published papers, including my own paper, “Freedom-to-Operate Patent Searching: My Six Basic Rules” [1] that I published a decade ago. Some of this has been mentioned in the Freedom-to-Operate Fundamentals: Comprehensive Techniques for Researching Freedom-to-Operate course [2] sponsored by the By Thomas E. Wolff Patent Information Users Group (PIUG). I discuss in this paper the development of search strategies and the postsearch analysis of candidate search results. I believe that the lessons learned from studying the processes of FTO searching are applicable to other kinds of technical and non-technical search services.
PARTICIPANTS, ROLES, AND RESPONSIBILITIES
The FTO search process often involves a chain of requestors, in contrast to other search requests that usually have only one direct client. FTO search requests originate directly or indirectly from a commercial manager, who would be supported by technical staff and patent legal counsel. Management usually asks about FTO when the business is considering commercializing new products or processes. This could be early in the research process or close to the time of pending commercialization. It could also be in support of merger and acquisition decisions. The question is whether there are any patent barriers to carrying out the new venture. Direct synonyms to FTO are freedom-to-practice (FTP) or right-to-use; others are clearance, infringement, and non-infringement, each of which suggests avoidance of conflicting patents.
The patent attorney usually takes the lead and ultimately renders the FTO opinion, while being supported by the patent searcher. Each patent affords the right to the patent owner to exclude others from making, using, offering for sale, or selling an invention; it is not a right to practice the invention. Therefore, the searcher’s goal is to find patents or active pending applications that could provide others with the right to exclude your client’s company from doing what it wants to do where it wants to do it. Because the enforceability of patents is country-specific, the searcher focuses on the countries and regions being considered for manufacture, sale, or use. Patent applications filed under the Patent Cooperation Treaty (PCT), which have the country code WO (world), are almost always searched because they are intended for transfer to country or regional patent offices for prosecution, usually within the first 32 months.
Along the way, the searcher makes judgments involving the choice of candidate records to report but does not offer legal opinions about the actual applicability of patent documents, particularly in the United States. By being selective, the searcher keeps the patent attorney from reviewing patents of no interest or relationship to the matter. The result of that patent analysis is provided in an FTO or non-infringement opinion by the attorney. An FTO search and opinion help the business monitor and mitigate risk. In the end, there is never any absolute certainty; the process serves as a risk assessment based on available data and best analysis. Future commercialization comports with the comfort level of the attorney and business management. To enhance this comfort level, attorneys tend to work with patent searchers, whose skills and judgment they trust.
