9 Best Practices for Performing an FTO Patent Search
Companies often conduct Freedom to Operate (FTO) searches during their product development/product launch stage in order to maximize their R&D outputs or avoid any patent infringement or lawsuit on their product. It is critical to correctly decide the direction of the search by defining some important factors such as features of a product, jurisdiction of search, date restriction, etc. In this article, we will be studying 9 best practices which should be followed to get the optimal output in an FTO Patent search in the least amount of time.
1. Focusing on Important Key Features
Key features are the backbone of a search therefore these should be unique and self-explanatory. Before starting a Freedom to Operate search, all the unique key features should be relatively compared to finalize most important features among them. This process of comparison and deciding focus helps to identify the main key features of the search. Also, a client and a searching firm should always spend quality time in identifying and agreeing about main key features of the search to provide best output of FTO Patent search. For example, if a searcher is performing a search while focusing equally on every key feature then there might be a good number of chances that the person will miss an important patent. However, if the person has initially identified main key features then the person will give high importance to some particular key feature and the result will not be missed, resulting in high quality search.
2. Jurisdiction Coverage
Freedom to Operate search is performed according to the jurisdictions in which the client is interested to launch its products. A good searcher should consider and cover all the channels pertaining to a particular jurisdiction to provide the best quality search. Let’s take an example; a patent can be filed in Germany (DE) through various channels such as directly through German Patent Office, filing through WIPO and having DE as a designating state, filing through EPO and having DE as a designating state. Hence, it is crucial for the searcher to cover all the important channels else there might be chances of missing important patents.
3. Date Restriction
This is an important aspect while performing a Freedom to Operate search. Generally, patents filed in the last 20 years in geographies of interest are considered relevant for this analysis. Further, for WO/PCT applications, a time frame of last 31 months is considered with designating geographies of interest. One main thing which is to be kept in mind before finalizing the date restriction is about the domain of the search. In some domains such as human and veterinary pharmaceuticals, food additives, color additives, medical devices, etc., the concept of Patent Term Extension plays an important role. The term extension aims to restore a portion of the patent term that is lost while the patent holder is awaiting regulatory approval of the safety and efficacy of the product. The patent term extension cannot exceed five years. For example, if a product is in clinical testing and regulatory review then the patent term may be extended for a period of time. Therefore, it is important to vary the date restriction to cover these types of cases where the Patent Term is extended.
4. Targeting important players of the domain
In every domain, there are some important players which have a huge portfolio in that domain and searching efforts should be prioritized to carefully evaluate their patent portfolio. Especially, a company should carefully evaluate the portfolio of their immediate competitors as they may act as a big hurdle in the success of the product launching. During an FTO Patent search, one should run dedicated strings to cover all the important patents owned by them. The prior art search strings for these immediate competitors should be run with minimum limitations of classifications and keywords as these competitors are already working in the same domain and chances of capturing false hits are minimal.
Also, in case the search strings seem to capture few important patents assigned to any patent troll, that should be separately analyzed and same should be highlighted to the client.
5. Segregating patents into different sets for prioritizing efforts
The effectiveness of searching and analysis of the patents can be drastically increased by dividing the whole patent result set into different subsets based on the following factors:
- Claim Length: FTO searches require detailed & comprehensive claim analysis of the patent.The length of the main independent claim defines the scope of the invention. As a general rule, shorter claim length of main independent claim has broader coverage of the domain. Many searching databases have a feature of providing the main independent claim length. Therefore, it is better to segregate the patent set as per the length of the main independent claim.
- Legal Status: In FTO searches, the patent result set can also be divided as per the family legal status of the patent family. During launching of a product, only the active and granted patents serve as roadblock therefore these patents require more focus. Hence, segregation of the patent set can be done as per this factor.
6. Citation Search
The backward and forward citations of a patent are generally the closest results to that particular patent in that domain. Once the analysis part is done, it is always a best practice to do the citation search of the shortlisted patents. This step helps us to identify some patents which could have been missed during searching due to different factors such as translation mistake, missing keyword, missing classification, etc. Hence, citation searching is an important tool to strengthen the FTO patent search and providing full proof coverage.
7. Similarity Search
This feature provided by the searching databases is again a crucial aspect of FTO searching. At many instances, this feature helps in identifying the close prior arts that otherwise may have been missed. Considering, each relevant patent may have a huge significance from FTO perspective, it is generally advised to not miss such standard searching step to capture all the patents which disclose similar inventions.
8. Dynamically updating Keywords & Classifications
Initially, the keywords and classifications are identified by an analyst based on quick searching of patents and products of the domain. During searching and analysis, it is recommended to keep an eye on the diversified keywords which are being used to disclose the same invention. Further, classifications should also be tracked throughout the search process to understand which class includes most of the patents of interest. A seasoned analyst should have a habit of iterating the old strings by using updated keywords to ensure no obvious patents are being missed and best quality searching is performed.
9. Report the Findings
FTO searches have high stakes therefore the findings need to be reported in a structured way to avoid any chances of communication gap. Further, the findings should be easy to understand. An FTO report should be designed to accommodate the following points:
- Categorization of Results: The patent results found should be well categorized to define different sets of results in an easy way. The different categories can be Relevant, Potentially Relevant, Related, etc., wherein the claims of the relevant patents are quite broad, and the product appears to infringe the protected subject matter of these patents. Similarly, the potentially relevant and the related results are those patents whose claims include some restrictive features and product may or may not be infringing these patent claims.
- Order of Results: In case of FTO searches, it is another good practice to report the patents in the decreasing order of their threat potential. Doing this, helps in significant reduction of the client time as the client can get a quick review of the top results.
- Updated Legal Status: The legal status is one of the most important factors and is dynamic in nature. It gets updated at regular intervals by the respective patent office depending upon the various factors such as patent life, status of maintenance fee payment etc. During launching of a product, only the active and granted patents serve as roadblock therefore these patents require more focus. Therefore, at the time of report preparation the legal status of at least all the relevant patents should be manually checked from individual country websites to incorporate latest updates.
- Latest Claims: A FTO patent search is an exclusively claim oriented search. Therefore, only the latest claims are to be considered for the analysis purpose. Further, each claim of all the active and granted patents should be manually referred from National patent office websites to ensure best quality.
Performing FTO searches entails a lot of things at stake, which is why it is critical to follow all the best practices to derive the best outcome. Every step requires special focus on small but important things which impact the entire search process. As every factor is interconnected to another factor, ensuring quality at each step is compulsory. The searching team conducts quality checks at regular intervals while simultaneously keeping in mind about the key aspects of the search. Further, in case any error is found then it has to be resolved at the earliest otherwise the overall project timeline and quality can be affected. Sagacious IP’s Freedom to Operate searches are designed to help clients in identifying potential roadblocks as well as uncover design around technologies. Click here to know more about this service.
-Mani Singhal (Engineering) and the Editorial Team