These assessments specifically focus on infringing another party’s IP rights – be that their patents, designs or trademarks. The most common FTO activity is the commissioning of an FTO search. FTO searches are an important aspect of due diligence when developing new products, services and brands. The searches can focus on specific technologies, concepts or brands.
What does an FTO search involve?
FTO searches are crafted to uncover any existing IP rights which may present an infringement risk. These searches are typically conducted on several IP databases, and sometimes may also include more general internet searching to uncover disclosures which are not strictly limited to IP rights (for example, online forums, website disclosures, etc.)
Why is an FTO analysis important before launching a product?
[Body text] Put simply, it is easier to change features or parts of a product during the design phase / before launch. The launch of a product will generally mean that tooling has been sourced, advertising has started and that products may already be on the market. This final point is crucial, because if a patent (or a group of patents) exist which cover your product, then any post-launch sales may be considered as infringing acts.
When should I get an FTO search?
The timing of an FTO search is an important decision. If carried out too early in the development process, then it may be possible that more relevant IP rights come into force within the period between reviewing the search and commercialisation.
If it is left too late, then it may be difficult to change course, and an entire project may be put at risk. Of course, if the FTO is left until after a product is launched, or ignored entirely, then it is highly likely that a competitor will spot the infringement of their rights and pursue action.
An attorney can advise you on the best time frame to carry out your search.
Do I need to search worldwide?
You only need to carry out an FTO search in territories of commercial importance. For example, if you intend to sell a product in the UK, then you will need a search covering the UK. However, if you plan to manufacture this same product in China, then you may also want to consider a search to uncover any relevant IP rights in China.
How is FTO different from patentability?
[Body text] The main difference is that FTO analysis is typically concerned with finding potential barriers to commercialising a new product or process, whereas patentability is concerned with finding potential barriers to obtaining patent protection of your own.
Therefore, FTO searches are primarily focused on patent documents which are in force, and in the territories of interest to you. On the other hand, patentability searches focus on relevant disclosures, typically regardless of age or territory.
Of course, the two activities can be combined with one broad search, or group of searches. Those patent documents which are in force can be analysed from both an FTO and patentability perspective, and those which are not in force may be analysed from a patentability perspective only.
What if my FTO search uncovers a risk?
In the event that an FTO search uncovers a risk, there are options. For example, a “validity” search may be conducted, which looks for disclosures which could demonstrate that the problematic patent is not actually new and inventive over prior disclosures. Think of these as a patentability search for your competitor’s patent.
Other possibilities include contacting the owner of the relevant patent to discuss the possibility of obtaining a licence. In some situations, some may also consider simply designing around the patent – but extra care should be taken to ensure that this design-around is sufficiently different from the problematic patent from a legal perspective, as patents quite often cover broad concepts rather than very specific constructions.
