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Patent and Intellectual Property Law: Freedom to Operate (“FTO”) Analysis

By John DiGiacomo

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.

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