Freedom-to-Operate Patent Searching: My Six Basic Rules
Wolff, Thomas E., Searcher
What risks will a company take if it decides to commercialize a new product or process? Specifically, what need it fear from patent litigation? Freedomtooperate (FTO) opinions provide risk assessments relating to infringement of granted patents and potential infringement of pending patent applications. FTO opinions are an important part of making good business decisions. In the U.S., only patent attorneys are qualified to provide legal FTO opinions; patent agents can only offer opinions related directly to patent prosecution. (For more details on the role of patent agents, read David Hricik's 2007 article, "Patent Agents: The Person You Are" in the Georgetown Journal of Legal Ethics [vol. 20, no. 2, pp. 261-286]). Nonetheless, patent searchers exercise critical judgment in performing FTO searches, also known as freedomto-practice, clearance, infringement, non-infringement, or right-to-use searches.
The goal of the FTO search is to find relevant unexpired patents or patent applications that could become commercialization barriers in the countries targeted for the manufacture, sale, or use of the proposed commercial venture. This article will describe some of the major steps that searchers should take to ensure that their FTO search reports provide attorneys with the information they need to make appropriate FTO analyses. I use a hypothetical case study based on an actual search event on high-density polyethylene fuel tanks (see the Six Rules of Success sidebar at right).
These six rules for successful FTO searching also apply to all search processes, but I describe them herein with particular reference to FTO searching. Apply the rules throughout the search process and use conservative judgment and iteration as appropriate.
Verify and Re-Verify the Scope With the Customer
The customer interview is critical to understanding the scope of the search. I may interview the patent attorney and/or the search professional at the client organization and then supplement that information by contacting the client's technical experts or commercial managers. I prepare a draft cover letter clearly defining the search subject, including elaborating on the subject details, as well as geographic and patent expiry limitations. A clear explanation of the search scope becomes the basis of the search strategy. Once completed, I get feedback on the cover letter and search scope from the client to ensure that I cover the topic appropriately. As necessary, I revise the search scope and strategy at that point and throughout the search process.
In the case of this hypothetical FTO search, I determined that the search scope should include the concepts and terms listed in Table 1 below.
The critical concepts are the polymer composition, density, and intrinsic viscosity and the manufacture of blow-molded or hollow articles--not just vehicle fuel tanks. The attorney in the search on which this case is based agreed that I would not search for any specific polymerization catalysts, but that I should note the catalyst composition during the postsearch evaluation of candidate patent references. We decided to limit this first search to major Western patent authorities covering recent EP, US, and PCT (Patent Cooperation Treaty, designated WO) patents and patent applications. We chose to limit the search to patent documents filed since 1985 in order to capture all likely unexpired patents or pending patent applications and to eliminate the large number of expired on-topic documents. Searching back 22 years should be adequate to find potentially in-force patents. We agreed to defer searching for patents from Canada, Mexico, or specific European countries until the attorney had evaluated the results of the initial search. I deferred determination of legal status and possible expiration due to nonpayment of maintenance fees until after the attorney had made a first analysis of reported patent documents. …