octimine technologies

FtO Search

Constantin BahlmannConstantin Bahlmann

Freedom-To-Operate (FtO) analysis:

Written by Dr. Marc Feron, former EPO patent examiner.

Legal opinion on whether or not a contemplated commercial production, marketing and use of a new product, process or service infringes the IP rights of others in a certain country, derived from searching patent literature for issued or pending patents in that country.

WARNING: A FtO search, no matter how exhaustive or expensive, can never eliminate all risks nor reveal all potentially problematic third party IP rights (e.g. pending patent applications not yet published). Cost and time constraints tend to increase these risks.

Also see:
wipo-magazine: IP and Business: Launching a New Product: freedom to operate

Octimize your Freedom to Operate Analysis!

Introduction

Patent litigation is best avoided when introducing a new product or process into a new market because it can be expensive, uncertain and risky.
A Freedom to Operate Analysis is a precaution aiming to reduce those risks by assessing whether or not, and to what extent, the commerce of a process or product can be blocked in countries X Y Z by valid patents or by pending patents which could become valid in one or more of those countries.

As a FtO search typically not only involves a patent search to uncover possibly relevant third party IP rights, and a patent register search to evaluate in which countries these IP rights are or may become valid , but also an interpretation of the scope of patent claims according to the case law of countries x, y and z, such a search can be efficiently prepared with an octisearch, but normally cannot be considered complete without a legal opinion of a patent attorney.

Although the following explains how much of the patent attorney’s work can be prepared, and which third parties may become relevant for a licensing or cross-licensing agreement, the reader is hereby expressly warned against using the following methods without the expert opinion/supervision of a patent attorney, or betting the future of their business by attempting to interpret by themselves the actual scope of unfamiliar patent claims.

Determining the scope of a patent always requires considerable experience in interpreting the claims, the written specification, the relevant prior art and the history of the application process.

Warning: A FtO search will be useful in identifying most of the relevant and potentially problematic/blocking IP rights, especially if carried out by an experienced patent attorney. It may also be useful for suggesting negotiation partners for cross-licensing, or for suggesting which vital technologies should be patented. However, despite all precautions being taken, it is inevitable that some relevant third party IP rights might not be found, e.g. incorrectly classified applications using exotic terms, or recent applications not yet published.

Principles and procedure

Step 1: define the essential features of a technology, product or process of interest

To start an effective FTO search, please express in a text in plain English all the essential and necessary features of a technology, product or process of interest as precisely as possible. The starting point can be an advertisement pitching the merits or special features or special advantages of your product or process, and/or it can be just a list of product or device features or process steps which you consider essential to obtain the special advantages of the invention.

Step 2: Octisearch your text, identify similar prior art, then refine your text

Octisearch the text of Step 1. If you see something in the list of octisearch results that looks very much like your technology, make a note of it, this is a good start.

Why? By having found a similar document, you have gained additional vocabulary and expressions to better define your technology and its distinguishing differences with that document, if any. Write up those differences and add them to your original list of features in the octisearch query.

Also, it may be useful, in case of great similarity, to copy and paste from the description of the relevant prior art which you found at least the features which are common with your own technology and redo an octisearch on the thus completed writeup of your technology, product or process, iteratively until you no longer find documents that are exactly identical. Then you have probably arrived at a perhaps not very elegant, and perhaps partly redundant, but at least sufficiently complete description of your invention for octisearch FtO or patent application preparation purposes.

You can therefore deduct from this process which features are essential to distinguish your invention from the prior art, and which features are essential to properly characterize the essential features of the prior art relevant to your invention, product or process (if you are still unsure what those essential features are or how to define them, a good look at the independent claims of the closest patent documents found by octisearch might suggest which features were considered essential by the proprietors of those other documents.

If on the contrary, octimine reveals that all the features of your technology, product or process are known from a single document, then try to identify whether, for how long, in which association and to which extent (by which subset of essential features) they have been known.

If on the contrary, octimine reveals that all the features of your technology, product or process are known from a single document, then try to identify whether, for how long, in which association and to which extent (by which subset of essential features) they have been known.

Step 3: the 21 year search: evaluate to which extent your technology is public domain

The best way to ensure worldwide FtO (Freedom to Operate) is to be able to prove that your technology was entirely known over 21 years ago (because the maximum duration of a patent is 20 years), and to keep that proof. Some very successful companies therefore almost exclusively advocate use of documented older technology and implement it very, very well to minimize risks in export markets where there is little certainty about the contents of patents in force, e.g. exports to China or Japan.

It therefore makes sense to identify your product or process by its features and to search in non-patent literature (also standard textbooks) and octisearch patent literature to find out how much of your product/process was known 21 years ago. Fundamentally, this part of the FtO analysis is a prior art search.

Let us imagine we found 5 relevant documents D1-D5, each disclosing all or most of the features of your product or process, 3 of which (D1-D3) are 21 years or older.

Let us present these search results in tabular form in the following manner, filling out for each feature the page and line number where that feature is to be found in each document (filling out “o” if the feature is not disclosed):

Two possibilities:

  1. If that search identifies in a single document 21 years old or older all the essential features of your product (e.g. D1 in the above table), you have hit the jackpot, you have worldwide freedom to operate (at least from the patent point of view), and any patent owner (e.g. the proprietor of patent document D4) believing he has IP rights or even any patent troll will be stopped cold in its tracks and demands by being shown that document. If you found a document D1 disclosing all features, the FtO analysis stops here, you do not need to go to Step 4 below.
  2. If that 21 year prior art search reveals one or more differences between your product or process and the closest prior art (i.e. if D1 were not present in the above table), it is potential patent claims in particular on that or these differences, or part of that difference, and on the problem it solves that you’ve got to worry about, especially if it is not completely obvious.
    • If the differences between your invention, product or process and D2 or D3 do not seem obvious, then you may be considered (rightfully or wrongfully, we’ll see that later, but it is a situation where it is particularly prudent to ask a patent attorney to review the situation in more detail) as an infringer by the respective proprietors of D4 and D5. However, as a first step in this situation, it makes sense to search more precisely the missing feature and documents disclosing it: the patent classification fields (IPC,CPC,USPC,FI,FT) of those differences may be helpful in restricting the octisearch (please go to step 4 and also refer to the octimine application notes explaining the octisearch prior art search procedure) to find out with more certainty whether or not the differences truly are not public domain and if not, who may be holding patent rights.
    • If the difference is obvious, or results from the obvious combination of two documents (e.g. D2 with D3 above) and you/your patent attorney can easily prove it by the problem/solution approach, you almost have worldwide freedom to operate, but you should not be surprised if holders of earlier IP rights making demands on you are not necessarily easily convinced that such a combination of documents invalidates their demands. Here again, assistance from a patent attorney is necessary to rapidly solve any misunderstanding and minimize the likelihood of unnecessary but costly disputes.

Step 4: octiSearch

If the difference is not obvious, you need to first identify whether there are any blocking patents of 20 years or less claiming that particular difference or one of its essential features, whether these patents are still valid or pending in countries X, Y and Z (it is rare for a patent to be maintained the whole 20 years, because the yearly renewal fees increase with time), and who owns them.

This search can be initiated by octisearching the text defined in step 2 for countries x,y or z if octimine has English equivalents of all the patent documents for these countries. For instance, a reliable octisearch of US, WO and EP patent documents is always feasible.

In particular, valuable patents by larger companies are almost always applied for in the US, even if they do not apply in their home countries, because of the size of the market, and the US practice of awarding punitive damages (multiples of actual damages).

Step 5: Octisearch result and patent family status/validity analysis

If relevant or potentially relevant US, EP or WO documents are found with relevant descriptions, then the general scope of the claims (which may claim another aspect entirely even if the description is similar: remember that for an fto search, unlike for a prior art search, the scope of the claims is essential) and the status (pending, granted, lapsed, territorial scope, family members in which countries, whether priority has been claimed, at what date, from which countries and which documents, examination status, patent classification), in particular the legal status of the documents must be carefully studied (DocDB, espacenet).

Special attention must be given to the Global Dossier in Espacenet, if available, as this reveals what patent examiners think of the validity of the patent document and its claims, of the prior art status (this gives very useful information about which features can be considered public domain and which other companies might own relevant IP rights), where and how to look for further relevant documents (the citations by patent examiners deserve an attentive look, so do the IPC, CPC, FI and FT patent classification classes to restrict an octisearch and redo step 3 to iteratively identify with more accuracy what is public domain) and how the claims should be restricted to be valid.

It is at that stage that patent documents specific to countries x,y and z are found from espacenet. In particular, the priority documents, if any, are likely to have been used to claim priority in more than one country. The validity of the priority status can also be verified at that stage, if it turns out that the priority was not validly claimed, e.g. because the priority documents were actually not a first filing, a case frequently overlooked by patent examiners under production pressure.

Step 6: claim evaluation for specific countries x, y and z

octisearch will identify patent documents with similar descriptions but normally will not be able to give a reliable opinion of the scope of the claims of the few patent documents it identifies as similar, even for those that are worded in English. This is actually where the Because in any patent the claims must be supported by the description, each patent with a similar description is likely to have claims which may be blocking for the product or process of interest. However the actual scope of the claims must be examined individually and manually for the granted claims of family members granted in countries x y and z on a case by case basis because examination may have affected the scope of the different claims in different family members.

If relevant patents claiming this difference or part of this difference or an equivalent of part of this difference, then DocDB and espacenet must be consulted to see whether patent family members exist or potentially could exist (e.g. for WO and EP) for countries X,Y or Z, and whether the patents are still pending, in force or have lapsed, and how they have been amended.

It is important to remember that:

  1. patent protection is territorial: rarely do proprietors apply for patent protection in all countries!
  2. patents have a limited duration: 20 years (or less, when the renewal fees have not been paid)
  3. patents have limits of scope (often further reduced by patent examination: Espacenet’s global dossier for a patent normally gives useful clues as to why the scope of a patent may have been reduced) normally defined by the granted claims

Step 7: Are there any valid rights?

If the patents found by octisearch (if any) have not been filed in countries x,y or z, and have no family members there, or have not been renewed, you have freedom to operate. If there are no patents, consider patenting that aspect yourself.

Often, an invention is left unpatented, or lapses earlier in smaller, economically less important countries. You then have freedom to operate in those countries. And the claims of pending patents may still be restricted upon examination and thus not pose a problem any longer.

If there are patent claims in force not giving you freedom to operate, you have several options:

  1. redesign your process or product around that patent, preferably using known technology
  2. If there is no way to avoid using more recent technology (e.g. necessary compliance with a recent standard) covered by patents in the country, get a license (or enter cross-licensing negotiations)
  3. if the patent owner is smaller, or if punitive damages are not in the legal tradition of the country, some infringers sometimes take their chances

In a Freedom-To-Operate (FtO) analysis, companies are investigating whether there are any proprietary rights that hinder the development, manufacture and launch of a product. Blocking property rights (e.g., patents, trade names, or utility models) may affect both the entire product as well as components, manufacturing methods, technical details, or design and marking elements of the product. A careful freedom-to-operate search for a specific country always takes account of the patent applications filed both internationally and regionally, since national patent rights can also arise from these.

Start your free patent search now.

+49 89 8091 2947 | contact@octimine.com | © octimine technologies GmbH, 2017