Freedom to Operate Search

In a survey carried out by Derwent in Europe, over 70% of the companies surveyed admitted that they had spent money on R&D and patent developments, only to find that the product or technology in development was already protected by a competitor’s patent. PriorArtSearch.com can work with you at any point during your product life cycle to get your product protected and cleared for marketing.

More than an Infringement Search

Similar to a Patent Infringement Search, a Freedom to Operate Search or Patent Clearance Search seeks to demonstrate that a proposed product does not infringe any in-force patents. Conversely, if infringement exists, the client will be aware of it and can make the appropriate business decision. That business decision might be to commission a Patent Invalidity Search on the patent in question, to initiate design-around activities, or to consider licensing the technology at issue.

A Freedom to Operate Search, however, is broader than a Patent Infringement Search because it also considers expired patents and publicly available documents. The search includes expired patents and publications because no-longer-in-force patents and unpatented disclosures are in the public domain, which provides a safe harbor for the product.

The Freedom to Operate Search further extends a Patent Infringement Search by also determining where in the world the technology may be used or protected. A patent that blocks introduction of a product in one country may not have a counterpart patent in other commercially desirable countries.

Avoid Expensive Conflicts with your Competitors

A Freedom to Operate Search is generally a precursor to the drafting of a legal opinion by a patent attorney. This opinion will provide a risk assessment relating to infringement of granted patents and potential infringement of pending patent applications. In the U.S., only a patent attorney can provide such an opinion. At PriorArtSearch.com, we can provide both the patent search and the opinion.

When Should the Freedom to Operate Search be Conducted?

When to conduct a Freedom to Operate Search is a frequently raised issue that depends on the particular circumstances at hand. If the search is conducted too early, such as during an early research phase, the final product may evolve in unexpected ways and much of the search may turn out to be inapplicable. On the other hand, waiting too long to conduct the search is also a problem, as it usually means that the project is too far along to change.

Avoid Tasking Non-Legal Searchers with Claim Interpretation

An understanding of patent law, particularly claim interpretation, is paramount in conducting a Freedom to Operate Search. The searcher must interpret hundreds or thousands of patent claims of potentially relevant in-force patents. It follows that searchers make critical legal judgments based on claim interpretation when they determine which references to give to clients and which to delete.

Although many non-attorney searchers at other prior art search firms take on this type of patent search, we believe that practice to be unwise and that only an attorney searcher is qualified for this type of patent search. People who lack legal training ought not to be interpreting patent claims.

Home