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Article · 25.01.2021

Freedom to operate is a key IP strategy component

With an issued patent in your hand, you can prevent others from manufacturing, importing, selling or marketing your invention. But the patent does not automatically give you the right to use your invention. To do that, you need free scope in the market in order to ensure that you do not infringe any third-party rights. This is called freedom to operate and it is imperative to your commercial success.

It may sound strange that although you have been issued with a patent, you may be prevented from marketing your own invention, but that is nonetheless precisely the case. This situation may arise if, for instance, the searches made before marketing the product were not thorough enough.

“It’s tremendously important to identify early in the product development process the pre-existing rights already granted and consequently the (remaining) free scope available for marketing your own product. I’d go as far as to say that establishing an overview of existing IP rights, or at the very least mapping a so-called “patent landscape”, should initially be prioritised over patenting,” says European Patent Attorney Nanna Meyland Nicolaisen of Patrade Copenhagen.

What is a patent landscape?

A patent landscape is an overview of all potentially relevant patent rights that may constitute a risk – or perhaps entirely prevent a product from being manufactured, marketed or sold in one or maybe even all key markets. Often, and particularly if major investments in production facilities are required, a freedom-to-operate analysis should be performed.

What is a freedom-to-operate analysis?

A freedom-to-operate analysis – often referred to as an FTO analysis – is performed by way of a number of database searches intended to map all existing patent rights within a particular technology area. For instance, this may take the form of the above-mentioned patent landscape overview, which in some cases may result in a list of more than one thousand rights documents. Every one of the listed results will then be reviewed and eliminated, until eventually you have a shortlist of results that may be of relevance to the product at hand.

FTO analysis is the foundation of future business

In Nanna's opinion, what makes an FTO analysis so important is that it actually forms the basis of the entire future business and competitive position:

“A patent is important to keeping your competitors at bay, but it may also give you a false sense of security. For instance, you may have invented a device consisting of several different components that together solve a technical problem. You may be granted a patent for that device. But if one of the components of the device has been granted patent protection in its own right – even if the patent might have been granted in a different context – you have a problem. The fact is that this may potentially mean that another rightsholder can prevent you from marketing your device, even though you have been granted patent protection. If you have no free scope, you have no business.”

Performing an FTO analysis in advance would identify and avoid such a situation. Having landscaped existing relevant patents, you will be able to make slight alterations to the device with a view to leaving out or replacing the patented component or perhaps obtaining a licence from the rightsholder in advance to use the patented component.

“In connection with new projects, I’d therefore recommend that you get an early overview of potential restrictions due to third-party IP rights. In some cases, I’d even recommend that you first and foremost invest your resources in an FTO analysis. Once you have mapped the free scope available, you can then go on to having your invention patented to keep the competition at bay,” Nanna Meyland Nicolaisen concludes.