Right-to-Operate Search

"Empowering Your Path to Manufacturing Non-Infringing Products and Processes"

"A Right to Operate (RTO) Search, also known as a Freedom to Operate (FTO) or Clearance Search, is undertaken to identify enforceable patents that could impede the commercialization of new technologies. This search is crucial prior to the launch of a new product or implementation of a new process, to evaluate the risk of infringing on existing patent rights.

An FTO analysis requires a thorough examination of patent claims to ascertain potential conflicts or overlaps with the technology in question.

Use

Benefits of a thorough FTO Search include:

a) Mitigating the risk of expensive patent infringement litigation.

b) Enhancing negotiations for licensing agreements and cross-licensing opportunities.

c) Supporting the development of alternative designs or modifications to circumvent existing patents.

d) Facilitating strategic planning and cost reduction through process improvements and efficient production strategies.

e) Offering insights into the competitive environment and technological trends.

f) Identifying prospective business alliances and collaboration opportunities."

Key Considerations for Conducting a Freedom to Operate (FTO) Search

Focus solely on enforceable patents, including active granted patents and published pending patent applications, as these are the documents that could impact a patentee's freedom to operate due to potential claim overlaps or infringement issues. Non-patent literature does not typically affect the legal freedom to operate and may not require examination in an FTO analysis.

Since patent rights are territorial, they are only enforceable within the jurisdictions where the patents have been granted and are actively maintained through the payment of renewal fees. Consequently, an FTO search must encompass all jurisdictions of interest where the invention is intended to be commercialized.

Patents have a standard term of 20 years from their filing date, which dictates the timeframe for an FTO search. For pharmaceutical patents, consider extending the search to include patents filed within the last 25 years to account for possible patent term extensions.

Employ a variety of search strategies, including keyword searches, classification searches, combination searches, inventor and competitor searches, citation analyses, full-text searches, and, when applicable, specialized searches (e.g., chemical structure, design patents) to ensure no relevant enforceable patent is overlooked.

In FTO analysis, compare each aspect of the product or process against the claims of identified enforceable patents. Assessing each feature individually and in combination is crucial to gauge the overall relevance and potential infringement risk posed by the closest patents.

Pay attention to broad claims that encompass the general concept of the invention. If a patent claim includes elements A+B+C, and the invention under FTO scrutiny includes A+B+C+D+E, the broader claim impacts the FTO assessment. This highlights the importance of considering both specific and broad patent claims in the analysis.

While claims define the protection's scope, full-text searches are essential for a thorough understanding. Analyzing the detailed description and embodiments alongside the claims can reveal additional nuances and potential infringement risks not immediately apparent from claims alone.

This structured approach to FTO searches ensures a comprehensive evaluation of any legal barriers to the commercialization of new products or processes, minimizing the risk of infringement and facilitating informed decision-making.