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Best Practices while conducting a Freedom to Operate Study

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The number of patent infringement suits being filed has been on the rise over the years. While it may not always be possible for companies to anticipate such lawsuits well in advance, some of suits may have been anticipated, and some of the anticipated ones could have been avoided by taking precautionary measures. A Freedom to Operate (FTO) study is one such precautionary measure to anticipate patent infringement and provide a chance to avoid infringement. A comprehensive FTO study takes several things into consideration, such as purpose of the study, jurisdiction, R&D stage and nature of analysis desired, among others.  

Purposes of conducting an FTO

An FTO study may be conducted for one or more reasons, some of which are discussed below.

Assessing infringement risks

One of the most obvious and primary reasons of an FTO study would be to identify third party patents that might be infringed incase a technology is commercialized. Hence, an FTO study can provide an insight into patent infringement risks associated with a technology.

Uncover licensing requirements and opportunities

An FTO study may uncover essential patents for which licenses may have to be acquired to be able to commercialize the technology without being liable for infringement. While some of these patents might be available for licensing at reasonable terms, others might be held by direct competitors and may not be available for licensing.

Patents that are essential for commercializing a technology, but held by competitors may become a road blocks in successfully commercializing the technology. Even in such scenarios, an FTO study may uncover essential patents that may be relevant to both the company and its competitors, but held by a party who may be ready to sell the patent. Acquisition of such patents may enable the company to bargain with competitors and engage in cross-licensing arrangements, thereby reducing the risk of patent infringement.   

Provide direction to R&D activities

An FTO study may also uncover patents that may not be essential for commercializing a technology, but may be infringed if technology is not tweaked to work around such patents. Identification of such patents may enable R&D teams to design products/process in such a way that the patents are not infringed. Hence, the study not only enables anticipation of infringement, but provides a chance to avoid infringement.

Right time to initiate an FTO study

The right time to conduct an FTO study may vary based on various factors. In case a study is conducted at a very early stage, such as during an early technology conceptualization phase, the final technology may evolve in unexpected ways and much of the study may turn out to be inapplicable. Moreover, a very early study may not be able to determine the certainty of the risk, as the market needs and the patent landscape may change. On the other hand, waiting too long to conduct the study is also a problem, as it usually means that the project is too far along to change. Hence, a moderately early research is preferred or recommended over a late research to avoid unnecessary investment in research.

Prerequisites of an FTO study

An effective FTO study can be conducted by collecting certain information at the initiation of the study. The quality of the information gathered may play a pivotal role in making the study effective. Such information may be provided by various stakeholders within the company, such as scientists, engineers, in-house IP counsel and business leaders. A short list of information that may be collected at the initiation of the FTO study, and the stakeholders who may furnish such information is provided below.



A detailed description of the technology, including a list of features requiring clearance

Scientists, engineers, in-house IP counsel

List of countries in which the technology has to be commercialized

Business leaders

A list of known competitors, patent holders, and/or patents that may be relevant to the technology

Business leaders and in-house IP counsel


Scope of the search

Freedom to operate can never be determined with absolute certainty. This is because the patent landscape is dynamic, new patents issue, old patents expire, and some patents are abandoned. Therefore, freedom to operate does not imply absolute freedom from the risk of infringing someone else’s intellectual property. That is why there is a need to adopt certain practices while conducting a search, thereby, at least minimizing the risks of infringement. Some of the practices are discussed below.

Granted patents

An FTO study should definitely concentrate of identifying granted patents that may be relevant to the technology. Granted patents may be of four types, which are listed below with comments on how to deal with them.

 Granted patent


In force, with the renewal fee having paid

Caution should be exercised while commercializing technology claimed by such patents.

Lapsed due to non-payment of renewal fees, with the option of being reinstated

Should be tracked till the time reinstatement date is lapsed. Different countries may have different provisions for reinstating a lapsed patent.

If reinstated, then caution should be exercised while commercializing technology claimed by such patents.

Generally such patents are good targets for acquisition, since the status of such patents indicates that the patent owner may not consider the patent to be worthy enough to be maintained.       

Lapsed due to non-payment of renewal fees, without the option of being reinstated

One may explore the option of using the claimed technology without being liable for infringement of the patent in consideration. However, it may be noted that, there could be other patents which are in-force, which may be infringed upon by using the technology of the patent in consideration.

Expired after completing their full term

The technology disclosed in the patent may be safe to use, unlike the lapsed patent discussed immediately above.


Patent applications

An FTO study should also consider identifying patent application. Patent applications may be of three types, viz., patent applications awaiting examination, patent applications undergoing prosecution and abandoned patent applications. The first two types of patent applications may eventually issue and can have an impact on the FTO of the technology. However, in case of abandoned patent applications, one has to reconfirm whether any pending family application are present or not. In case pending family applications are present, then the disclosure of such applications will be relevant to the FTO study.

PCT applications

An FTO study should also consider identifying PCT applications, which are designating the countries in which the technology is proposed to be commercialized. In any case, most PCT applications designate all the PCT contracting states. Hence, from a practical perspective, all PCT applications that still have the option of entering national phase may be consider in the study.

Non patent literature

Non-Patent Literature (NPL) is usually not a primary sources of date in an FTO study. However, NPL may provide one with knowledge and means of identifying potential competitors in the market. Further, NPL may be helpful while contemplating possible workarounds.

Analysis in an FTO study

After having shortlisted patents and applications by conducting a search, the next step of the study may be analysis of the identified references. Various portions of a patent document and documents associated with the patent/applications may be relevant from an FTO perspective, some of which are discussed below. 


The claims, especially the independent claims, of the patents have to be analyzed in detail. The analysis may try to ascertain whether all the limitations of the claims are present in the technology. It may be noted that independent claims of pending patent applications may be modified before a patent is issued. Generally, one or more limitations of dependent claims may be introduced into the independent claims to facilitate patent grant.

Prosecution history

The prosecution history of patents should also be considered during analysis. Claims are given the broadest reasonable interpretation in an infringement proceeding. Hence, considering the prosecution history in an FTO study may enable assessment of the scope of the claims and the likelihood of infringing the claims.  


Apart from considering the claims, the description of the patent application may be considered to anticipate claims that may be presented in future. It may be noted that, granted patents or abandoned patent applications, which have pending family patent applications may present claims, which are enabled by the disclosure. Hence, in cases where a patent family has at least one pending patent application, the disclosure as a whole (not just the claims) may be of relevance in an FTO study.


FTO studies are among important tasks involved in defining IP strategies. An effective FTO study involves gathering relevant information at initiation, considering the right data for search, using comprehensive search strategies and holistic review of relevant references. Although an FTO study cannot guarantee an absolutely risk free landscape, it does mitigate risk to a substantial extent by showcasing opportunities to acquire patents, cross license, work around and invalidate patents.

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Does a patent give me the right to use my invention?

It is often conceived that a patent gives the right to the patent owner to use his invention. This conception is extrapolated to mean that, if a patent owner sells a product that is based on the invention that is protected by his own patent, then he will not be liable to infringement on others’ patents. This understanding, rather misunderstanding, sometimes becomes the basis for filing a patent application.

To bust the above myth, let us step back and look at the concept of patenting. A patent is granted to an inventor for an invention. This invention need not be something out of the blue; rather, a subject matter is considered to be an invention, as long as it is a new product or a new process involving an inventive step, which makes it non-obvious to a person with ordinary skill in the related technology. Now let us consider a simplistic example to better understand this concept.

Person “X” applies for a patent on a product that has the modules A, B, C and D.

The patent office examines the patent application and identifies 3 existing patents; the first one covering module “A”, the second one covering module “B” and the third one covering module “C”. In spite of these existing patents, the patent office is convinced that a product comprising modules A, B, C and D has inventive step, which makes it non-obvious to a person with ordinary skill in the related technology, and hence grants a patent.
The granting of the above patent only means that a product comprising modules A, B, C and D, according to the patent office satisfies the requirement of patentability. In other words, granting of a patent does not mean that, the patent office grants a permission to commercialize the patented invention, and guarantees that such commercialization will not violate others’ patent rights.
In the above example, if the patent owner, despite of having a patent granted, commercialises his patent invention, by selling a product based on his patent invention, could end up infringing the 3 existing patents, which covered modules A, B and C individually.
From the above example and the discussion, one can understand that, it would be unpractical for any legal system to grant the right to commercialize the patented invention to the patent owner.
Hence, the patent system, on the other hand, gives the patent owner the right to prevent third party, who do not have his consent, from the act of making, using, offering for sale, selling or importing the patented product in the jurisdiction covered by the patent. Similarly, if the patent is grated to a process, the patent owner gets right to prevent third party, who do not have his consent, from the act of using that process and also from the act of using, offering for sale, selling or importing the product obtained by that process in the jurisdiction covered by the patent.
We hope you found this article useful. You may be interested in reading our article "Can the details of my invention disclosed in the patent application be maintained as a secret?"
Feel free to write to us at [email protected] if you have any comments, queries or want to avail our services.
Please feel free check our patent sevicers page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree   

How can I find out if my invention has already been invented?

This question may get asked when,

Researchers, before investing their time and money, would want to know, if it’s worthwhile to research on a product.  They would want to find out, what kind of similar products exists in the market and what technological improvements can be made to those products.

For any new technological improvements/inventions, inventors may want to patent their invention. Before starting the process of patenting, inventors would want to access their chances of patentability of the invention. In order to access the patentability of an invention, a search to identify prior art is required.

When a product is to be launched into the market, to avoid infringement, it is advisable to determine freedom to operate for the product in question. In order to determine Freedom to operate, a search of patent documents of the jurisdiction in question is to be conducted. To know more about freedom to operate, you can go through our article about Freedom to Operate

Different strategies can be adopted to determine the answers to the above scenarios:

A search for prior art can be conducted on the internet using search engines. This strategy may uncover some data, but will not always uncover  very relevant data. This is owing to the fact that patent documents and publications may not have been indexed in search engines. Search strategies involved in searching of relevant patent and non patent data requires considerable skill and technique. To know more about search strategies and techniques to be adopted, you can read our article How to conduct a patent search

Another strategy to be adopted is to Search for non patent literature. Searching of non patent literature can aid in finding out if a similar invention exists. Searching of non patent literature be conducted using databases such as  IEEE, Science Direct, IPmenu which hold enormous amount of data relating to non patent literature. Searching of such non patent literature data can uncover similar technology and would help in taking an informed decision regarding the invention. If a similar technology exists in non patent literature, it will affect the patentability of the invention, but it will have no bearing on the freedom to operate for a product, as non patent literature does not provide rights to the owner of that publication from stopping others from making and selling of those products.Note that if a publication about an invention exists in non patent literature, it does not mean that the owners would not have sought patent protection as well. It is advisable to cross check patent data as well before taking a decision about Freedom to operate.

 Another strategy to be adopted is to search patent literature. Searching of patent literature can be conducted using various free and paid patent databases. It is important to know a few facts about patents.

Patents are jurisdiction specific. It means that to obtain patent protection, one has to file for patents in all the jurisdictions one wishes to obtain protection. 

While determining freedom to operate for a specific country, only patent documents from that jurisdiction are to be considered. 

To determine the patentability of an invention, one needs to consider relevant patent documents from all jurisdictions.

I hope you find this article helpful. Check our  patent services page to find out if we can cater to your patent requirements. Also feel free to contact us or ask us a question and have it answered within 24 hours.
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5 options available if your product is infringing on a patent

Companies and individuals alike take aggressive steps to protect their patent rights. Most often, if a patent holder finds out that a product or a process is violating his patent rights, he might seek damages from the infringing party. Such enforcement of patent rights is usual in developed economies, such as US and Europe. However, in the recent years, even India has seen its share of attempts to enforce patent rights (Ex: TVS vs Bajaj).

Generally, one may realize that his product may be infringing on a patent(s) by carrying out a freedom to operate study (our article on freedom to operate) and an infringement analysis (our article on infringement analysis). On the other hand, a patent holder might have informed you that your product is infringing his patent and asked you to stop all activities relating to the infringing product. Irrespective of how you found out, the question now is to find out a remedy in this scenario.
This article attempts to provide an overview of the options you may consider when you find out that your product is most certainly infringing on someone’s patent. In a nutshell, you may consider the 5 options listed below:
1 – Product reengineering
2 – Compulsory license
3 – Cross licensing
4 – Licensing
5 – Invalidation
1.                 Product reengineering
Product can be reengineered in such a way that the reengineered product does not infringe existing patents. It may be noted that a product is said to be infringing on a patent, if the product maps on to the claims of a patent. Hence, to reengineer a product, you will have to clearly understand the scope of the claims of relevant patents. Thereafter, the product should be modified in such a way that the modified product works around the scope of existing patents.
Product reengineering can be an effective strategy if you are at an early stage of product development or if reengineering the product is not an expensive procedure. In some cases product reengineering may require significant investment of time and money. Further, product reengineering may delay the product launch, which may in turn affect the success of the product. In case where product reengineering is not a suitable option, you may consider the viability of the remaining 4 options provided below. 
2.                 Compulsory license
The provision of compulsory license exists in India, and you can give this option a serious thought with respect to the Indian market.
According to the Indian Patent Act, a patent holder within 3 years from the date of grant, work the patented invention in India. Further, the patent holder has to make the patented invention available to public at reasonably affordable price and fulfill reasonable requirement of the public (Refer to section 54 of the Indian Patent Act). The Indian Patent Act also recites that patent holder has to file a statement every year regarding working of patent (there can be significant penalties for not filing this statement). This statement of working helps the patent office in determining which patents are worked in India and which ones are not.
As a strategy, you can check if the relevant patents are worked in India. If the patents are not worked, then you can use the appropriate grounds to seek a compulsory license from the patent holder.      
3.                 Cross licensing
Cross licensing as a strategy can be explored if you have a patent portfolio. In this approach, you would essentially check if the holders of those relevant patents are infringing on patents in your portfolio or if they would benefit from practicing your patented invention. If answer to one or more of the above conditions is in affirmative, then you can reach an arrangement, wherein you let the holders of the relevant patent practice your patented invention(s) and in return you are given a license to practice their patented invention(s).   
4.                 Licensing
In the previous approach, as the name suggested, you provide license to patent holders to practice your patented invention, and in return, you get a license to their patented technology. On the other hand, if you do not see a significant advantage in cross licensing, you can explore the option of getting licenses from the patent holders. There are different options, such as buying the patent, fixed royalty, running royalty and fixed plus running royalty, which you may want to explore when you are contemplating on adopting this strategy.     
5.                 Invalidation
Invalidation means proving that a patent was wrong granted and having the same revoked. This approach can be used when there is a good probability of invalidating the relevant patent(s). Invalidation, although an effective approach in some cases, it can be a time-consuming affair, as invalidation proceedings are generally carried out in courts.
In India, one can invalidate a granted patent by filing a “post-grant” opposition in the patent office within 1 year from the data of publication of grant of patent. Thereafter, you will have to take a different approach to have a patent invalidated. On the other hand, if you feel that a patent application, if granted, can be a threat to your business, then you can file a pre grant opposition anytime between the publication of patent application and grant of patent. 
Companies generally use services such as technology monitoring and competitor monitoring to keep a watch on granted patents and published application and take actions, such as, filing of pre-grant and post-grant oppositions. 
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
I hope you found this article helpful.You can download a copy of this article here
Best regards, Team InvnTree   

Why is freedom to operate study a must for technology companies?

Before launching any product, companies conduct market research to ensure that they have a successful product.

Companies may have different reasons to conduct market research, which may include:
a)      Analyze if there is a need for their product
b)      Identify a market for the product
c)      Study competition
d)     Device a marketing plan
e)      Come up with pricing strategy
While, market research is an essential step, an equally important task is finding out if the product has Freedom to Operate (FTO).
Now you may ask, if this has got anything to do with obtaining a licence from the government authorities. Well, this has nothing to do with that. FTO is related to finding out if your product infringes upon the patent rights of others. If it does, you may want to strategize the launch of your product based on that.
So what is Freedom to Operate or FTO and why should you bother about it?
FTO in simple words is the freedom to commercialize a product/process without infringing (our article on infringement: Is my product infringing on others patents) on others patent rights. Commercialization of infringing products may lead to expensive law suits. Hence, a FTO study is an essential task to be carried out before commercializing a product.
How is a FTO analysis conducted                     
It shall be noted that patent rights are territorial. For example, if someone has a patent over a specific type of “pen” in the US and not in UK, then one can commercialize that “pen” in the UK without infringing on the US patent. Hence, a FTO study for a product/process is specific to a territory and considers patents in that territory. So, if you want to find out, whether you have the freedom to operate in US, the relevant patents in US will be taken into consideration.
To find out if your product is infringing on the patent rights of others in a specific country, a search has to be carried out to uncover all the relevant patents in that country. This search will consider granted patents and patent applications (not granted yet) into consideration.
Now you may ask, why consider patents applications which have not yet been granted, and how can you be infringing upon such patent applications. Well to answer your question, a published patent application may be granted in future, and once a patent is granted, they will have the right to sue somebody who has infringed upon their patent rights.
Why carry out Freedom to operate search and what other advantages can you gain from it.
Freedom to operate search should be preferably carried out at an early stages of product development, so that you do not incur huge development costs in developing potentially infringing products and are not entangled in a legal battle later, on infringement charges.
A Freedom to operate search helps in many ways; some of them are listed below:
  1. Will minimize the risk of getting sued by others, for having infringed upon their patent rights.
  2. Such a search will also dig out patents, which have expired (in most countries its 20 years). There may be many useful technologies which can be used from these expired patents.
  3. You will find a list the patents which are relevant to your product/technology and helps you craft strategies, such as:
·         Purchasing patents which are relevant to your product, so that you gain freedom to operate rights in that territory
·         Obtaining a licence from the patent holder for a specific duration of time by working out a payment option. This will give you the right to operate without infringing on others patent rights.
·         If you do have a patent of your own, you can also try the approach of cross licensing of patents to gain mutual benefits.
·         Redesigning your product in such a way that it does not infringe upon others patent rights.
·         Try and invalidate the patents in question so that you gain freedom to operate in the concerned territory.
In conclusion, FTO analysis is a step every technology company should take before commercializing their product to avoid expensive law suits and gain knowledge about the strategies that can be adopted to obtain FTO in their desired territory.
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
We hope you found this article helpful.You can download a copy of this article here
Best regards – Team InvnTree