Freedom To Operate (FTO)
A Freedom To Operate (FTO) comprises a search, and an opinion on the ability of an inventor to develop, make, and market products without the possibility of infringing on valid intellectual property rights to third parties (e.g., other patent holders).
First step: Patent Data Mining (performing search)As above-mentioned, a Freedom to Operate (FTO) analysis invariably begins by searching patent literature for issued or pending patents. Remembering the place and time of an invention is important when performing a search. As such, it is important to understand that, although patents are territorial in nature (that is, that they tend to be confined within the country), their effect as prior art will not be territorial. Therefor, searches, need not to confine within a country or market, but expand beyond the limits of the invention location. There are multiple ways of conducting searches, some open source (free), while others at a cost. The latter tend to provide better analytics, and business intelligence, while the former tend to provide only raw data. Regardless of which medium it is used, most searches can begin by using the the available online tools. This is due to the fact, that online patent search systems have evolved considerably over the last two decades; from cryptic 'text only' command-line databases,
to today's sophisticated, interconnected web-based search systems such as Google Patents. These free databases made patent information popular to a wider audience and have substantially improved over the last few years, now offering patent search functionalities and additional features which were previously only available from commercial providers.
Second step: The analysis (infringement and validity)Two things are typically considered when performing an analysis under an FTO: (a) infringement, and (b) validity. Infringement is derived from 35 U.S.C. 271 which states that: "Except as otherwise provided [...], whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." Said statute itself does not specify how infringement analysis is to occur but the courts have developed common law concerning the relationship between the patent document (particularly the claims) and infringement analysis. As such, Infringement can occur in several ways. One of those ways is known as "Literal infringement". This means that the proposed product literally infringes every, or one claim, as drafted. In contrast, when there is no literal infringement, one must understand that it can also occur by equivalency. The latter is typically referred to as the "doctrine of equivalents," which is a judicially created doctrine. Said doctrine states that when an element or limitation is not literally present, it may still be infringing if there is an equivalent element or limitation in the accused product or process. Equivalency gives raise to a lot of legal battles, so one must be careful and potential erred on the safe side when considering whether one thing is equivalent to another. There are other type of infringements, each with their one definition, which are typically known as: (a) direct, (b) indirect, (c) joint, (d) divided, (e) contributory, and (f) induced. Finally, there is the invalidity analysis. Invalidity of a claim requires that the claim of a patent, does not meet at least one of the statutory requirements of a patent which are: novel, non-obvious, definiteness, written descriptions, and enablement (Note that post-AIA, the best mode requirement cannot be a used to invalidate a claim).
Third Step: The opinionOne way to preempt a court finding of "willful infringement" is by obtaining an opinion that a company was either not infringing the claims of the patent or that the claims were invalid under any of the statutory
requirements. Notwithstanding the aforementioned, it is important to note that having an FTO opinion will not prevent a company from being sued for infringement; rather act as a preventive measure of potential infringement. An FTO also helps an inventor know the competition's IP landscape, and its potential effects over their invention. Inclusive, given the territoriality of patents, it can even provide market advantages.