5 Frequent Pitfalls of Freedom To Operate Analyses

Whether you refer to it as a Freedom To Operate (FTO) search, Clearance search, or an Infringement search, this type of patent search is an integral part of the innovation process.  An FTO search, among other things, will help you assess your innovation and aid in determining where to focus research and development efforts as you prepare to bring your product to market.  At a high level, this type of patent search allows you or your legal counsel to determine your risks of infringing on an existing valid and in-force patent and whether you have the freedom to operate, or clearance, in the given market in which you plan to introduce your product or service.

Commissioning or performing a comprehensive freedom to operate search helps you avoid the risk of infringement at product launch as well as future risk by identifying patent claims that your product may potentially infringe upon.  By identifying current or future threatening claims, the proposed product can be designed around the threatening claims, and the patents could be licensed or challenged in a post grant proceeding such as an Inter-Partes Review (IPR). Due to the high-stakes nature of patent infringement, the importance of having a skilled analyst and a comprehensive search approach is paramount.

Performing a comprehensive and high quality freedom to operate search requires both a deep understanding of the patent system and the use of advanced patent search techniques in order to avoid the most common mistakes.  This blog post will detail the five most common pitfalls in FTO searches and will describe how you can ensure that you, or your search provider, understands how to conduct a proper and comprehensive search.

Pitfall #1: Forgetting About Future Freedom To Operate Claims (AKA Myopia)

The first and most common pitfall of freedom to operate projects is that they are myopic in scope and only focus on current threats.  In this instance, the FTO search is typically limited to in-force claims within the jurisdiction of interest.  While it is true that these granted patents can present the greatest immediate threat to the proposed product, this approach overlooks the future.  Patent applications currently being examined could be granted with claims upon which your product may infringe.  Such a surprise after market introduction is costly.

A proper search should encompass not only granted patents with threatening claims, but also published patent applications both within the jurisdiction for clearance, and international applications (i.e. PCT applications).  While the claims of patent applications are likely to evolve during prosecution, identifying applications with broad claims or with disclosed subject matter that describes the proposed product gives the product owner a set of applications to monitor over time. 

Foresight is forewarned, or, to paraphrase the 17th century mathematician Robert Burton, don’t be pennywise and pound foolish. 

When analyzing the relevant documents identified during a freedom to operate search, it is important to look beyond the claims and familiarize yourself with everything that was disclosed in the application.  Too often, the analysis is limited to the current claims and does not consider potential future filings.  This is especially true when considering PCT documents.  

You should always review the full disclosure to determine if there is a chance that future claims may be filed that would be a threat to the proposed product. In the United States, co-pending, or active, patent applications can be filed as a continuation or a divisional of a parent patent application wherein the content of the specification is identical but additional claims can be filed if those claims are supported by the specification.  

Pitfall #2: Focusing on the Wrong FTO Relevance Criteria (It’s Not Just Another Patent Search)

The second pitfall is treating a freedom to operate as just another patent search.  All too often, the patent analyst will apply the same selection criteria to FTO searches as is used in determining the relevance of potential prior art – (novelty and non-obviousness).  While these are the right factors to consider for patentability or validity searching, they are not the appropriate factors to consider when performing a clearance or infringement search.  The risk of the analyst primarily considering novelty and non-obviousness factors results in a patentability search on your product and not a freedom to operate search! 

The change in mindset for a freedom to operate search is subtle, but significant.  Instead of identifying prior art that may anticipate inventive concepts of the product being cleared, or that may render it nonobvious, the focus must be on identifying claims which the product, or specific features, read on.  So-called “teaching references” and obviousness combinations are not useful for a clearance analysis and simply provide more results to review.  This very important shift in mindset and focus is vital to ensure that the scope of the search is correct and will not overlook critical references or overburden the attorney preparing the opinion.

Pitfall #3: Too Claims Focused (Take Off The Blinders)

It’s an easy conclusion to make that your FTO search and analysis only needs to consider what is claimed. After all, any potential infringement is determined by a comparison of your product and the claims of the patents on which you allegedly infringe.  This is a common way to manage your search budget and limit the search queries only to the claims. However, it is also a common pitfall and an easy way to open yourself up to unnecessary risk.  

Since an applicant is their own lexicographer, it is common to use more non-descriptive language throughout the specification, while reverting to more generic language in the claim.  The applicant then defines the language in the specification (see MPEP 2173.05(a)), which is then used to interpret the language in the claim.  Too often, the search strategy is limited to searching the claims, without consideration for what additional detail may be hiding in the specification.   

The risk here is that the claim may be written so generically that your product doesn’t appear to read on the claim (i.e. potentially infringe) and is never captured during your search for review.  In addition to using proper terminology and synonyms in planning your search queries, you must review the whole specification and not limit the search to the claims.

Pitfall #4: Freedom to Operate Wanted (Dead or Alive)

Patent analysts love the legal status filters that modern search systems have implemented – what could be easier than toggling a button to only show patents that are currently alive?  If only it were that easy!  

Search systems have continued to enhance their functionality over the years and now results can be filtered by legal status. This means that the system can restrict the results to only include unexpired enforceable patents (i.e. alive) or to only view expired, lapsed, and unenforceable patents (i.e. dead).  On paper, these filters should aid the searcher in a freedom to operate search by filtering out the noise. However, in practice these filters are overly restrictive and their use can introduce unintended risk.   

While patents whose terms have lapsed due to failure to pay maintenance fees are currently unenforceable, this does not mean that the patent is truly dead – it could come back to life.  Most jurisdictions give patent owners a grace period whereby a patent which has expired (due to a failure to pay the maintenance or renewal fees) can be revived after the fees and penalties are paid.  Unfortunately, these legal status filters do not give warnings such as when a currently expired patent is still within the window to be revived and thus should still be considered.  

Additionally, the legal status data is dependent on timely and complete reporting from the respective patent office to the database provider. We have found that this data can be incomplete or inaccurate.  Experience has taught us that relying on these filters introduces unknown risk, so we do not recommend their use for freedom to operate searches or analyses. 

Pitfall #5: Forgetting About Non-Patent Literature (NPL)

The last pitfall is a bit of a curveball: why should Non-Patent Literature (NPL) be considered when you are assessing the likelihood of a product infringing on the claim of a patent?  

As previously discussed, a comprehensive freedom to operate analysis must focus on both current and future threats.  Unpublished applications represent a hidden threat in that they have been filed with a patenting jurisdiction but aren’t yet published and can’t be included in the patent search.  In fact, depending on the jurisdiction and the publication rules, the application is typically published within 18 months of filing. However, non-publication can be requested by the applicant, meaning the document won’t turn up in any search until it is granted!  Is that a risk worth taking?   

Non-patent literature is an important data source to identify potential future threats.  The risk can be mitigated by searching for authors or companies who are currently working on technology relevant to the product being cleared.  Due to the grace period given to applicants during which they can publish papers, blogs, podcasts, videos, or websites or even present at conferences prior to filing a related patent application — as well as the lag in publishing currently filed patent applications — it is essential to investigate non-patent literature (NPL) to avoid future surprises.  Once possible future inventors or assignees are identified, they can be monitored for newly published patent applications or granted patents that would have otherwise been overlooked. 

Final Thoughts

Avoiding the risk of infringement means identifying current and future threats by having a comprehensive and complete search conducted.  The pitfalls presented in this post are the most common we have encountered in our decades of professional patent search experience.  

Whether you are commissioning the freedom to operate search or performing it yourself, keep these pitfalls in mind to ensure a proper search and mitigate any risk of patent infringement.  The individual nuances matter and vary from jurisdiction to jurisdiction. Therefore, it is vital that you know the details for the particular jurisdiction of interest — how their data is structured, when it is published, and how to access it.  

If you would like to discuss further or request a consultation for your search project, please contact our team of experts at mail@ensembleip.com or +1 202 869 0203.  

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