A freedom to operate opinion, or FTO, typically refers to the process of determining whether a particular action can be completed without infringing on others' intellectual property rights.

What Does "Freedom to Operate" Mean?

The freedom to operate process may include commercializing or testing a product. Acquiring a patent does not grant you freedom to operate. A freedom to operate opinion can help a new developer by:

  • Completing a thorough search of valid patents to determine whether or not these patents cover your actual product, conceptual product, or the process of your product
  • Providing product clearance
  • Assessing the risk of infringement on someone else's product before you enter into the market
  • Helping businesses answer questions, such as:
    • Am I infringing on someone else‘s patent?
    • What current patents will affect my opportunity to profitably sell my own invention?
    • What are the risks with moving forward with my new product idea or process?
    • Will I have to license someone else's technology?
  • Identifying any patents, or patent publications, that would result in patent infringement liability if a new product or process is brought to the market

Freedom to Operate Analysis

It is critical to complete a freedom to operate analysis in the beginning stages of product or process development in order to determine the level of risk of patent infringement. If any associated risks are determined, then a strategic plan can be developed by the business partners through licensing and/or assignment agreements. In addition, this can allow for any product or process design changes that need to occur to avoid any patent infringement.

Intellectual Property

Typically, patents are presumed valid but can be found invalid during closer examination and through research. This may be due to patents that weren't fully established yet or problematic patents. Once issued, a patent is presumed active and valid. (See 35 U.S.C. §372.) Given this presumption, a patent's invalidity must be proven with convincing and clear evidence.

Since intellectual property rights are unique to different jurisdictions, a freedom to operate analysis should correlate to the particular region or country in which you wish to operate. Consider an agricultural engineer that seeks to commercialize a new seed in his home country. He has complete freedom to operate without issue if there are no:

  • Patents
  • Trademarks
  • Intellectual property rights on the seed
  • Plant variety rights
  • Intellectual property rights on the marketing, production process, or methods

However, the agricultural engineer may not have the same freedom if he wishes to export his seed to another country where intellectual property rights and patents may have already been established.

When a patent is granted, it should prevent others from marketing your patented information technology. However, it is advisable to still perform a thorough freedom to operate analysis prior to commercializing the technology. Freedom to operate can be questionable if your invented product uses another invention. To specify, another invention can be any machine, process, make, composition, or manufactured matter.

Freedom to Operate: An Example

Consider the following example, an inventor who designs an eraser to go at the tip of a pen could patent the invention. However, since the inventor doesn't own the patent for the pen, they could not freely manufacture and sell eraser-tipped pens. The person who does own the patent on pens would be having their copyright infringed.

Patent Databases

Patent databases are extremely important for determining whether there's freedom to operate in your jurisdiction. In your research, if you discover a patent or patent application that relates to your invention or process, you may still have freedom to operate. For a variety of reasons, the patent still may be available to use, including:

  • The patent may not have been applied for in your country.
  • A claimed invention or process is protected only in the countries where the patent was granted.
  • Patents can expire and have expiration dates.
  • Patents that have previously been issued may not be in effect if the patent owner has not been keeping up with their patent payments.
  • Laws regarding what is patentable vary among countries.

Certain countries have exemptions for some actions. For example, Germany exempts enacting research, and New Zealand exempts certain types of clinical trials.

If you need help with freedom to operate opinion, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.