A patent provides the right to stop others from exploiting your invention.
A patent does not provide the right to exploit your invention.
Freedom to Operate
‘Freedom to operate’ concerns whether it is possible to exploit your invention, without infringing the intellectual property rights of others.
A freedom to operate search will allow you to: (i) more fully appreciate the risks associated with commercialisation of your product; and (ii) modify your product to avoid infringement and limit further costs.
Search Subject Matter
Generally, the subject matter of a freedom to operate search will be limited to: (i) a product; or (ii) a method of operation.
Methods of manufacture may also be relevant.
When to conduct a freedom to operate search will depend on your commercialisation strategy.
You may wish to conduct a cursory freedom to operate search during a pre–design phase. You may wish to conduct another freedom to operate search after a product design freeze. You may wish to conduct a freedom to operate search after a product redesign phase. You may wish to conduct a freedom to operate search before a funding phase.
You may wish to perform a detailed landscape analysis to include non-active patents.
A freedom to operate search may need to be refreshed several times before and after product release.
A freedom to operate search will be limited to the jurisdictions covered by the search.
Attorneys will only be able to provide specific advice concerning the jurisdiction in which they are qualified.
The opinion of an overseas attorney will be required in the case of a relevant overseas patent.
Claim Construction / Risk Analysis
The scope of a patent will depend on the rules of patent claim construction in the particular jurisdiction.
Consider a case in which: (i) the product has arms spaced apart by a connecting arm; and (ii) a relevant patent claim recited “two arms adjacent one another‘. In such a case, it might be possible for a court to determine that the two arms of the product were ‘adjacent’ despite the inclusion of the connecting arm. The freedom to operate opinion would provide reasons for and against such a construction. The opinion would generally state which reasons would be more likely to be favoured by a court.
A freedom to operate opinion may provide a risk analysis.
A freedom to operate opinion may raise a case of potential infringement.
In the case of potential infringement, modifying the construction and form of the product may provide an avenue for escaping the claims of the patent.
A freedom to operate search will be limited to the search strategy employed.
The search strategy of a search may involve keywords, alternate expressions and patent classes. Given various possible patent search strategies, no search can be considered fully conclusive.
Additionally, patents are generally not published until 18 months after filing. For this reason, a freedom to operate search will not cover applications filed at least 18 months prior to the search.
A searcher may also disregard a relevant patent, as the searcher may not appropriately appreciate matters of legal construction.
Due to reasons of cost, a patent attorney will not conduct the search themselves but rather will only review citations raised by the searcher and provide an opinion. Searches are always conducted on a no liability basis as much as is allowable by law.
In the brief it is necessary to fully describe the proposed product or method. The description should include structural and functional features and cover all advantages.
If the product or method can be broken into design components, then a description should be provided for each design component.
The level of detail should be similar to that of our exemplary patent briefs. Advantages should be listed in order of importance in terms of product/method use.
Product design and launch dates are also an important consideration.
If manufacturing processes are relevant, they should be included in the brief.
Freedom to operate searches and opinions can be expensive for the reason that they typically involve a consideration of claim construction.
A freedom to operate search may cost $5,000, $10,000 or $20,000++ depending on the work involved.
Costs will involve: (i) searching costs; (ii) cursory opinion costs; and (iii) description and claim analysis costs. Description and claim analysis costs are generally the most significant of these costs.
One option to limit costs is to limit the freedom to operate search to particular patentees (recorded owners), inventors and other third parties. Another option is to limit the search to particular features and advantages of the product. There are however several obvious disadvantages to both these approaches.
We have performed a cursory analysis of several patents. The mechanical examples are useful for showing why advantages must be considered.
A cursory analysis of two mechanical patents is provided at: https://adamlaw.email/examples/mech/ (please contact us for passwords).
It may be advisable to have several search firms provide freedom to operate searches.
The search strategy employed by each firm should be recorded for comparison and expansion purposes.
Depending on various considerations, it may be advisable to maintain a restricted repository of industry patents, patentees and inventors.
The repository might include emails noting oral opinions, summary sheets and possibly full written opinions.
With opinions stored in the repository, they can be shared with attorneys in different jurisdictions to limit opinion costs.
The repository may provide evidence against allegations of any alleged wilful infringement.
The repository can also be used as a: (i) research and development resource; (ii) due diligence resource; and (iii) IP analytics resource.
Designs and Trade Marks
It is also important to perform freedom to operate searches on trademarks and designs.
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.