PATENTABILITY VS. FREEDOM TO OPERATE
Nihaarika Prudhvi, Trainee – Intellectual Property Rights Practice
Securing a patent for an invention is an important step toward protecting your intellectual property (IP) rights, as it allows you to prevent others from making, using, or selling your invention and claiming it as their own. However, before marketing and selling a finished product, make sure you have the Freedom to Operate (FTO). Owners may not be able to make, use, or sell your invention without the FTO. The FTO is especially important in industries such as biopharmaceuticals, biotechnology, and pharmaceuticals. Chemical products and companies entering foreign markets are few of the examples of manufacturing industries.
This article will explore common questions about the FTO. Also discloses few of the examples of FTO in action and also on conducting searches and mitigating risks.
In the field of intellectual property rights, two key concepts often come into play when considering the protection and commercialization of inventions: patentability and freedom to operate (FTO). While both concepts are related to patents, they address different aspects of the patent landscape. This article aims to clarify the distinction between patentability and FTO, highlighting their significance in the innovation ecosystem.
PATENTABILITY VS. FREEDOM TO OPERATE: WHAT’S THE DIFFERENCE?
Patentability refers to the criteria an invention must meet in order to be eligible for patent protection. It involves assessing whether an invention meets the legal requirements for obtaining a patent. The criteria for patentability typically include:
1. Novelty: An invention must be new and not previously disclosed to the public before the filing date of the patent application. It should not have been publicly known or used anywhere in the world.
2. Inventiveness (Non-obviousness): An invention must involve an inventive step that would not be obvious to a person skilled in the relevant field. It should not be an obvious combination of existing knowledge or prior art.
3. Industrial Applicability: An invention must have a practical application and be capable of being made or used in an industry. It should not be a mere abstract idea or a purely theoretical concept.
The determination of patentability is made by patent offices through examination procedures, where patent examiners assess the invention’s compliance with these criteria. If an invention meets the requirements, it may be granted patent protection, providing the inventor with exclusive rights to the invention for a limited period.
Exploring freedom to operate (FTO):
Freedom to operate (FTO) is a different concept that arises after an invention has been granted a patent or during the process of commercializing an invention. FTO refers to the ability to operate or commercialize a product or technology without infringing on the existing patent rights of others. It involves conducting a thorough analysis of the patent landscape to identify and mitigate potential infringement risks.
FTO ANALYSIS TYPICALLY INVOLVES:
1. Patent Search: Conducting a comprehensive search to identify relevant patents and patent applications that may cover similar or related technologies or products.
2. Patent Evaluation: Assessing the scope, validity, and enforceability of identified patents to determine their potential impact on the freedom to operate.
3. Risk Mitigation: Developing strategies to avoid or minimize infringement risks, such as designing around existing patents, seeking licensing agreements, or challenging the validity of patents.
- Identifying the relevant patents and patent applications that are potentially related to the technology or product in question.
- Conducting a thorough search and analysis of the patent landscape to identify existing patents that may pose a risk of infringement.
- Assessing the claims of the identified patents to determine their scope and potential relevance to the technology or product.
- Analyzing the potential risks and consequences of infringing on the identified patents, including legal actions, financial liabilities, and impact on market entry or commercialization.
- Evaluating the validity and enforceability of the identified patents, considering factors such as prior art, novelty, non-obviousness, and compliance with patent laws and regulations.
- Reviewing any licensing agreements or restrictions that may affect the freedom to operate.
- Identifying potential workarounds or design modifications that could help avoid infringement while still achieving the desired objectives.
- Consulting with legal experts or patent attorneys to assess the legal risks and options for mitigating infringement risks.
- Making informed decisions or recommendations based on the analysis, such as pursuing licensing agreements, seeking patent invalidation or non-infringement opinions, or modifying the technology or product design.
- Continuously monitoring the patent landscape for new patents or changes that may impact the freedom to operate and updating the FTO analysis accordingly.
The key significance of FTO analysis lies in its ability to identify potential patent barriers or risks before bringing a product to market. By ensuring FTO, inventors and companies can minimize the chances of infringing on existing patents, which could lead to legal disputes, costly litigation, or the need to cease production.
CERTAINLY! HERE ARE SOME EXAMPLES OF FREEDOM TO OPERATE (FTO) SCENARIOS TO HELP ILLUSTRATE THEIR SIGNIFICANCE:
Example 1 – Pharmaceutical Industry Example:
A pharmaceutical company has created a new drug formulation for the treatment of a specific medical condition. Before releasing the drug to the public, the company performs an FTO analysis to ensure that their formulation does not violate any existing patents. According to the analysis, another company has a valid patent for a similar drug compound. To keep FTO, the company may need to consider alternatives such as modifying the formulation, negotiating a licensing agreement, or challenging the patent’s validity.
Example 2 – Technology Start-up:
A technology start-up has created a revolutionary software application that increases efficiency in a specific industry. During their FTO analysis, they discover, however, that a competitor has a patent for a similar technology. To obtain FTO, the startup may need to modify its software to avoid infringing on the competitor’s patent, seek a licensing agreement, or challenge the patent’s validity. The FTO analysis assists the start-up in navigating the patent landscape and making informed decisions about the commercialization of their product.
Example 3 – Automotive Sector:
An automaker is working on an electric vehicle with a novel battery technology. They identify several patents related to battery technology held by other companies as part of their FTO analysis. To ensure FTO, the manufacturer may need to design their battery system so that it does not infringe on existing patents, seek licensing agreements, or challenge the patents’ validity. FTO analysis assists the manufacturer in avoiding potential legal disputes and bringing their innovative electric vehicle to market with confidence.
Example 4 – Consumer Electronics:
A smartphone with advanced features is being developed by an electronics company. During their FTO analysis, they discover that a competitor has a patent for a critical feature of their smartphone. To obtain FTO, the company may need to modify the design or functionality of their smartphone in order to avoid infringing on the competitor’s patent, seek a licensing agreement, or challenge the patent’s validity. FTO analysis assists the company in navigating the patent landscape and ensuring the successful launch of their product while not infringing on the rights of others.These examples demonstrate the importance of FTO analysis in identifying potential patent barriers and mitigating infringement risks in a variety of industries. Companies can make informed decisions, avoid infringement, and maintain a competitive edge in the market by conducting FTO analysis while respecting the patent rights of others.
FTO analysis should be ongoing:
Each major stage of the process, from R&D to securing investments, frequently necessitates a new patent search and analysis. FIf you come across another patent that may limit your FTO, you should seek the advice of an experienced patent lawyer first. You have options if you are concerned about another’s patent rights. These options include purchasing or licensing the patent rights, cross-licensing with the patent holder to obtain the necessary rights, or designing your product to avoid infringing the patent, also known as designing around the patent. Joining patent pools or aggregates is another option. Patent holders who use similar or related technologies collaborate to create a patent clearinghouse of shared patents. However, these arrangements are beyond the scope of this article. You can rest assured that obtaining the FTO has long been a problem. As a result, many new ways to obtain the FTO have emerged. If you are concerned about the FTO, you should speak with a knowledgeable patent attorney. They can determine if there is a problem and suggest solutions.
To summarize, in the field of intellectual property rights, patentability and freedom to operate are distinct but interconnected concepts. Patentability determines whether an invention meets the legal requirements for obtaining a patent, whereas FTO analysis ensures that a product can be used or commercialized without infringing on existing patents. Patentability incentivizes innovation, while FTO analysis mitigates infringement risks. Understanding the distinction between these concepts is critical for inventors, businesses, and intellectual property professionals to effectively navigate the complex patent landscape.
- A Comparative Analysis” by Shubhra Agrawal and Pravin Anand. This article explores the interplay between patentability requirements and freedom to operate considerations, highlighting the importance of conducting a comprehensive analysis before filing a patent application.
- An Integrated Approach” by G.R. Mohan and N. Pradeep Kumar. This research paper discusses the significance of considering both patentability and freedom to operate aspects during the patent drafting and filing process, emphasizing the need for a comprehensive approach.
- A Practical Guide” by Charles R. Macedo and Michael J. Kasdan. This book provides a practical guide for understanding the patentability requirements and freedom to operate considerations, offering insights and strategies for managing intellectual property risks.
- Legal and Economic Analysis” by Geertrui Van Overwalle. This scholarly article examines the legal and economic dimensions of patentability and freedom to operate, highlighting the importance of balancing innovation incentives with the need for a competitive marketplace.
- “Patentability, Infringement, and Freedom to Operate” by Carl Oppedahl. This article provides an overview of the patentability requirements, infringement analysis, and freedom to operate considerations, emphasizing the importance of conducting a thorough analysis to avoid potential legal issues.