Freedom to Operate
With today’s competitive market, companies looking to launch a new product must tackle a critical issue, finding patents that can threaten commercialization of their product. Performing a thorough Freedom-to-Operate (FTO) search is more than a mere precaution—it is a tactical decision to:
* Prevent the expensive and time-consuming process of reworks on functionalities and features of the product.
* Reduce the risk of additional licensing fees or litigation.
Our FTO Search Process
Our approach, like everything else we do at Citius Minds, to FTO searches is both methodical and structured, leaving no room for guessing on our clients’ end and giving them a complete overview of the patent landscape surrounding their product.
1. Product Dissection:
We start by splitting the product into composites and studying each even minutest feature to determine a wholesome picture of its features.
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2. References for Patent and Publication Search:
Our team does comprehensive research to find:
* Threatening pending patents describing potentially applicable claims covering the features of the product.
* Relevant publications that can help inform the patentability and FTO analysis.
3. Feature-to-Claim Mapping:
For each identified patent, a detailed analysis of the patent is performed and each claim of the patent is mapped against the features in the product. The technology is not used in a vacuum, however — it is mapped across partner knowledge and archives to highlight where potential infringement risk vs. client portfolio coverage exists so that clients can identify vulnerabilities and proactively protect themselves.
4. File Wrapper Analysis:
To obtain more insights, we do a file wrapper analysis for the analyzed patents, where we look into:
* The prosecution history, such as rejections and amendments.
* The impact of claim language changes during the life of the patent that may change the scope of protection and relevance to the client’s product.
Key Deliverables
FTO reports give clients clarity and insights they can take action on, including:
* Risk Assessment: A thorough review of patents whose claims may overlap with elements of the product.
* Claims Analytic: Analysis of the impact of claim language and coverage on potential infringement risk.
* Strategic Recommendations: Advice on whether the product can move forward as is or whether changes must be made to reduce risk
So, Why Citius Minds for FTO Searches?
* Exhaustive Review: Our team of professionals doesn’t miss a beat providing a comprehensive review that includes all applicable patents that could have a material impact.
* Proven Industry Knowledge: Our consultants have worked across varied industries and technologies which translates into actionable recommendations for every unique product.
* Strategic Response: Moving beyond risk identification, we assist clients in developing responses to the risks of their products — considering licensing agreements, design-around alternatives, and other options.
The Project Manager That Guides You Through Your Product Launch
More in-depth FTO search helps the companies to proceed with confidence and be prepared to understand the various areas of the patent scenario. When you choose to work with Citius Minds, we provide much needed foresight that allows clients to deliberate on potential risks and decide accordingly, reducing time to market and enhancing chances of success.
Partner with Citius Minds for an effective FTO search and analysis solution to depend on for the future of your product!
Case Study
“We were just about to launch our product. We had no idea someone had already patented it. Citius Minds helped us save millions that we would have wasted in pointless litigations.”
Head of Research & Development – A mobile manufacturing company
Challenge:
A mobile manufacturing company wanted to check possible threats of infringement for their new product to launch in the United States. The invention was related to a mobile phone having an aluminum housing, curved AMOLED touch sensitive display, locking mechanism to switch off the display screen, and a notification bar for checking the notification without unlocking the display screen at the back side of the housing. Citius Minds was engaged to perform an analysis of the product features, identify available active patents which claimed the features similar to the aforementioned product.
Execution:
The team thoroughly analyzed all the product features. A ‘Same-Page Document’ was shared with the client for sharing the team’s understanding of the important features of the product. This document included key features of the products based on team’s understanding, several representative term-sets and important US classifications, which could potentially be used in conducting the patent search. We used several paid and free patent databases to formulate exhaustive key strings using different term-sets to list the patents (filed only in the United States) similar to the disclosed product. The team then analyzed the list to shortlist the patents that claimed similar features as that of the client’s product.
One of the shortlisted patents also claimed a mobile phone having segmented AMOLED screen in which the bigger section was 10 times the smaller one. The smaller section was used to show notifications such as missed calls, new messages, etc. and the bigger screen was utilized for other smartphone features such as surfing the internet, playing games, chatting, etc. Another patent claimed several features of the product but did not disclose the aluminum housing and the notification screen at the back of the housing.
The team created a diagrammatic representation of the available and missing features in the identified patents as a part of a detailed report including ‘element-wise’ color-coded mapping of the product features with the relevant claim of the prior arts as well. Our team went a step further in guiding the client by suggesting them several features that may be added or parameterized to create a design around product.
Impact:
The client was able to showcase the similarities and differences between their product and the prior-art comprehensively using our diagrammatic representation, to the decision making team. The color-coded claim mapping helped his team to understand the relevancy of the identified patent references. They decided to tweak around with some of their features so as to prevent their product to infringe on any of the patents still active. The client used the millions, which would have been spent on a pointless patent infringement litigation suit, on research and development of their next generation tablet. We were engaged again to work closely with the R&D team from the beginning of product development lifecycle.
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FREQUENTLY ASKED QUESTIONS
1. What is a Freedom to Operate (FTO) search?
An FTO search is conducted to identify whether a product or process can be commercialized without infringing on any existing patents. The goal is to ensure that launching a new product or service won’t lead to patent infringement litigation, which can be costly and time-consuming.
2. Why do I need an FTO search?
Companies conducting R&D, especially those planning to launch a new product, need an FTO search to avoid potential patent infringement. FTO helps assess the legal landscape and minimizes the risk of lawsuits from patent holders who may claim that your product or process infringes their patents.
3. How long does an FTO search take?
The length of an FTO search depends on the complexity of the product or process and the number of relevant patents to be reviewed. Generally, FTO searches take 2-4 weeks. If multiple jurisdictions or a large number of patents are involved, it may take longer.
4. What regions are covered in an FTO search?
FTO searches are typically jurisdiction-specific. At Citius Minds, we cover all the jurisdictions where you plan to manufacture, sell, or distribute your product, ensuring that you comply with local patent laws and avoid infringement.
5. What information do I need to provide for an FTO search?
To conduct an FTO search, we need detailed descriptions of your product or process, including technical drawings, schematics, or manufacturing details. This allows us to compare the features of your product with the claims of existing patents in relevant jurisdictions.
6. How does an FTO search differ from a patentability search?
While both searches involve reviewing existing patents, their goals are different. A patentability search is designed to assess whether your invention is new and non-obvious, making it eligible for patent protection. An FTO search, on the other hand, determines whether your product infringes on any existing patents and whether you can commercialize it without legal risk.
7. Can an FTO search guarantee that there will be no infringement issues?
- An FTO search can significantly reduce the risk of infringement, but it cannot guarantee absolute freedom from potential litigation. New patents can be granted, and previously undisclosed information can surface, leading to potential challenges even after conducting a thorough FTO search.
8. How much does an FTO search cost?
The cost of an FTO search varies depending on the complexity of the product and the number of jurisdictions being searched. At Citius Minds, we provide customized quotes based on the client’s specific needs and business objectives.
9. Can an FTO search prevent litigation?
Yes, conducting an FTO search minimizes the risk of patent infringement lawsuits by identifying potential conflicts before commercialization. If infringement risks are found, you can take steps to modify your product or seek a licensing agreement to avoid legal disputes.
10. What should I do if potential infringement is identified during an FTO search?
If an FTO search reveals potential patent conflicts, we recommend consulting with a patent attorney to explore options such as designing around the patented technology, seeking a license, or negotiating a settlement to avoid costly litigation.