Under US patent law, the owner of a patent has the exclusive right for the duration of the patent to manufacture, market, sell, and license the invention that is protected by the patent. This is similarly true for patents issued by patent offices in foreign countries. If you violate someone else’s patent, you can be sued for patent infringement. Losing a patent infringement case can be very expensive. For example, Apple, Inc., owned various design and utility patents related to its smartphone. Samsung was accused of violating those patents when Samsung began selling its own smartphone. Apple sued Samsung for patent infringement and, recently, a jury returned a verdict for Apple and awarded $533 million dollars in damages for patent infringement against Samsung.

A freedom to operate analysis can help avoid potential infringement

While a patent will protect an invention, it will not protect a similar invention as long as the similar invention is sufficiently different. Of course, it can be difficult to determine whether a new invention is “sufficiently different” from the patented invention. That is why it is necessary to conduct what is called a freedom to operate (“FTO”) analysis before manufacturing, marketing and selling a new product. The purpose of a FTO analysis is to help ensure that your making and selling your new product will not infringe on existing and pending patents. Often, a FTO analysis will also evaluate whether other intellectual property rights might be infringed like trade secrets, trademarks, copyrights, etc.

The most cost-effective time to have an FTO analysis conducted is early in the process of developing new products. This saves money since, if “problems” are discovered, then research and development can be shifted towards less legally risky paths. Remember that patents cover machines and devices, but also processes, methods, technologies and designs. Further, your new product does not have to completely infringe existing IP — a portion of your new product might infringe and/or the infringement might be partial since many patents have multiple patent claims.

How is a FTO analysis conducted?

Experienced and knowledgement patent attorneys can provide a FTO analysis for a fee. The process involved an analysis of various documents relevant to your new product including issued patents and pending patent applications. These documents include the patent applications and their supporting documentation. Often, a review of technical publications is conducted. The “goal” is to obtain a legal opinion that your new product does not infringe any existing patents or patents that are pending.

What are my options if potential infringement is discovered?

A FTO analysis might uncover potential infringement dangers. However, there are options if potential infringement is discovered. As noted above, one option is to have your R&D department “invent around” the potential infringement with a new process or method or design, etc. Another option is to purchase the patent or seek a licensing agreement from the patent owner. With a license, typically, a licensing fee will be required, but that cost may be reasonable and might be less expensive than any “work around” (same with purchasing the relevant patent). Another option is to wait until the patent at issue expires. This might be satisfactory if the patent is expiring soon.

Contact Revision Legal

For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

What an FTO Analysis Actually Examines

A Freedom to Operate (FTO) analysis is a legal opinion that evaluates whether a specific commercial activity—making, using, selling, or importing a product or process—would infringe any valid, enforceable patent claims currently in force. The analysis involves two distinct steps: (1) identifying all potentially relevant patents through a comprehensive search of U.S. and relevant foreign patent databases, and (2) analyzing the patent claims that survive the search to determine whether your product or process falls within their scope.

Claim scope analysis is the technically and legally demanding core of an FTO opinion. Patents are infringed claim by claim, element by element. Under the Federal Circuit’s precedent in Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995), claim construction is a question of law for the court. An FTO opinion must anticipate how a court would interpret claim terms—looking to the claim language, the specification, and the prosecution history—to determine whether your product or process literally infringes or infringes under the doctrine of equivalents.

The Doctrine of Equivalents and Design-Around Strategies

The doctrine of equivalents extends infringement liability beyond literal claim coverage. Under Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), a product or process infringes under the doctrine of equivalents if each limitation of a claim is met either literally or by a substantial equivalent—performing substantially the same function, in substantially the same way, to achieve substantially the same result. This doctrine means that designing around a patent claim requires more than just changing terminology; the design change must create a genuine functional and structural distinction.

A thorough FTO analysis identifies not only whether infringement is likely but also design-around opportunities: specific modifications to your product or process that would clearly avoid the scope of problematic claims. Early identification of design-arounds during product development is far less expensive than redesigning after launch or defending an infringement suit.

When to Conduct an FTO Analysis

The most cost-effective time for an FTO analysis is early in the product development cycle—before significant resources are committed to a design that may be infringing. Key trigger points include:

• Before beginning manufacturing or commercialization of a new product.
• Before entering a new geographic market where local patent protection may differ from the U.S.
• Before accepting venture capital or institutional investment, since sophisticated investors routinely require FTO opinions as part of due diligence.
• When a competitor sends a cease and desist letter asserting patent rights.
• When your company is a target or party in a merger or acquisition—M&A due diligence almost always includes IP freedom to operate review.

Limitations of an FTO Analysis

An FTO analysis provides an informed legal opinion—not a guarantee. Published patent applications are not publicly searchable until 18 months after filing, meaning recently filed applications in the same space may not appear in a search. Additionally, the FTO analysis covers validity only to the extent the prior art is apparent from a reasonable search; it is not a formal invalidity opinion. If an FTO analysis identifies a high-risk patent, a separate invalidity analysis—examining prior art that may render the patent unenforceable—should be considered alongside design-around options.

Contact Revision Legal

If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.