Should I have a patent infringement search conducted for a simple product?

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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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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