What is an FTO search?
Also known as a Freedom-To-Operate (FTO) or right-to-use search, a patent infringement search looks for patents that may cover a product or service. An infringement search involves a careful comparison of the patent claims to the product to be sold, as opposed to a novelty search which focuses on the patent drawings and written descriptions. See our prior discussion on the different types of patent searches. Obviously, an FTO search should result in only live patents which are current in the payment of maintenance fees and have not expired.
For complex products such as a smartphone that includes both hardware and software, it might not be cost effective to perform an FTO search since there could potentially be thousands of relevant patents that would require tens or hundreds of thousands of manhours to review.
More cost-effective for simpler products
But, what about a simpler consumer product with a few structural or mechanical features? Would it make financial sense to check if such a product would infringe any existing patents before investing more time and money in development? I think so. With a relatively simple mechanical concept, the range of possible patents to explore is much narrower. Also, the time required to compare the claims against a simple product is significantly shorter.
So, if you’re wondering whether your concept for a new product is patentable, don’t stop there. You should also consider whether such a product would be infringing, and get a cost estimate for an FTO search. Otherwise, you could end up owning a patent without the ability to make the product.
Wouldn’t a patentability search also cover infringement?
No, a patentability/novelty search focuses on the disclosures of prior art patents, and not the claims. For example, if your invention comprises three core features – ABC – then a patentability search would look for patents that show those three features. Suppose there was not a single patent that disclosed all three features, so you get a positive thumbs-up after the patentability to proceed with applying for a patent.
But, what if one of the prior art patents found claimed (noticed I didn’t say disclosed) simply AB. In that case, your product of ABC would infringe a patent claiming simply AB. So, it’s very possible to receive favorable results from a patentability search, but unfavorable results from an FTO search.
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