Help Your Trademark Clients Avoid Patent Infringement Claims: Freedom to Operate Opinions
J.D. Houvener | May 17, 2023
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses a unique perspective to their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patent in the market. His background in business and experience as an engineer and patent attorney empowers him to clearly communicate to a broad range of clients about their immediate and long-term needs for patenting in order to protect assets, leverage opportunities, and limit liabilities. Some key areas of the patent prosecution practice are: patentability searches, patent applications, office actions, infringement opinions, post-grant actions and consultation on patent strategy and portfolio management.
You’re meeting with a trademark client, and you’re both looking forward to getting their new business off the ground and running. They share their plan for launching a new product and what markets they’re going to target. While your client has done their due diligence with their business plans, they’re unsure if something like this has already been done before. Here’s where you might recommend a Freedom to Operate Opinion (FTO).
Bringing a new product or business to market is exciting! However, it does come with its fair share of risks. One of the biggest risks that businesses face at this stage is potentially infringing on the intellectual property rights of other companies or patent holders. Patent/trademark infringement is a serious offense that can have costly consequences like litigation, damages, and even injunctions to prevent the sale of the product.
You can help mitigate the risk of infringement by helping your clients acquire a Freedom to Operate Opinion (FTO). This opinion is assurance that they can move forward without infringing on an existing patent or trademark in their industry.
What is a Freedom to Operate Opinion (FTO)?
A freedom to operate opinion is a legal document that provides an assessment of the intellectual property landscape surrounding a product or technology. The “landscape” in question includes all prior art, or granted patents and documents available to the public. The opinion assesses whether the company’s product or technology infringes on any existing patents, trademarks, or copyrights. It can also provide an analysis of the patentability of the company’s technology and the potential risks of infringing on third-party intellectual property.
For example, if you’re trying to manufacture a shovel, the FTO will uncover all patented shovels, rakes, and related digging equipment. An FTO goes a step further than a patent search by also identifying any specific processes associated with the patents. For instance, if this shovel is created with a novel technique, an FTO will find out if there are rights to that technique. There could be additional IP rights surrounding the preparation methods, functions, and even packing and shipping materials.
An FTO opinion is typically prepared by a patent attorney or other legal officer, and it can be requested by either the company or their investors.
Does my client need an FTO?
As a trademark lawyer, it’s helpful to know when and if your client needs an FTO opinion. In general, businesses should always seek an FTO before launching a new product or service. An FTO identifies related products, helps your clients avoid any type of infringement, and it also unveils potential competitors in the space. It’s always best practice to get these things handled before a business launch.
When it comes to the timing of filing for an FTO, it is generally recommended to request an FTO prior to submitting a trademark application. Any potential conflicts with existing trademarks can be identified and addressed before the application is submitted. Adjustments are much easier at this part in the process, and this approach can save your clients time and money down the line.
If your client decides to move forward with having an FTO prepared by a patent attorney, you can still serve as a liaison and provide guidance on relevant trademark issues. Patent attorneys may not have the same level of expertise in trademark law as a trademark lawyer would, so your input can be invaluable in ensuring that all potential trademark conflicts are identified and addressed in the FTO opinion.
Additionally, you can review the FTO opinion and provide feedback for your client. Make sure that they have a comprehensive understanding of the FTO and of any potential legal barriers that could prevent them from manufacturing their product or branding their services in a particular market.
FTO opinions are nearly essential for businesses launching new products or services, but they can also be beneficial for existing companies. An updated FTO provides insight into the most current intellectual property landscape in a particular market. This can help the business avoid trademark disputes, which are usually costly and time-consuming. Also, this valuable information can guide your clients to make informed decisions about the future of their business including which new products or services they want to develop next.
Industry Applications
Freedom to operate opinions are particularly relevant in industries where there is a high concentration of patents, such as the pharmaceutical, biotech, and technology industries. In these fields, companies often need to use the intellectual property of others to develop their products. Many new products and inventions are advancements on existing ideas or technology. An FTO can provide assurance to the company that they are utilizing the IP in a way that is not infringing on the patent holder’s rights.
Pharmaceutical Industry
For example, in the pharmaceutical industry, a company may want to develop a new drug. However, there are existing patents that cover the use of certain compounds, chemicals, or methods. An FTO can help the company assess whether they can use these agents or methods without infringing on the pre-existing patents. If there is a risk of infringement, the company can negotiate a license agreement to use the intellectual property in a transformative way
High-Tech Industry
The tech-sphere is an industry saturated with patents. Businesses often run the risk of patent infringement when utilizing existing tech to develop a new product or software. If an engineer is developing a new app that uses a particular technology, they need to be certain about whether there is protected IP being used not only in the final product, but also in the creation of the app. In this case, an FTO can discern whether there are patent claims that are infringed upon by the new software. Again, if there is a reasonable amount of risk for infringement, the business or business owner can try for a licensing agreement.
Benefits of Freedom to Operate Opinions
By now, you’ve probably realized the importance of Freedom to Operate Opinions.They’re especially important for start-ups or small businesses that may not have the resources to engage in costly litigation. Only after obtaining an FTO can they move forward with their new product or technology confident they are not infringing on someone’s patent rights.
An FTO can also help companies avoid the risk of unintentional infringement. In some cases, a company may not be aware that their product or technology infringes on the intellectual property rights of others. An FTO can help the company identify and mitigate these risks before they become a much bigger issue.
Finally, an FTO can help all companies save time and money. Without an FTO, a company may face expensive legal repercussions and be forced to resolve any disputes over intellectual property rights. An FTO is an extra expert opinion on whether or not to move forward with bringing a product to market.
Limitations
If you hire a patent attorney to give their FTO opinion, you can be confident that it is thorough and complete. However, there are a couple of limitations that all FTOs will have. The sea of prior art and patent documents is immense. Typically, a patent attorney will keep the FTO search to your specific industry. Also, unless noted otherwise, most FTOs will be limited to the United States (or your respective country). So, if you branch off into another industry or decide to go international with your product, it might be a good idea to revise or ask for a new FTO opinion.
Obtaining an FTO
Here are some steps you can take to get a FTO:
- Hire a patent attorney: A freedom to operate opinion should be prepared by a patent attorney or legal professional who has experience in your specific industry. You’ll want to find someone who is familiar with the existing patents and intellectual property landscape in your field.
- Conduct a patent search: Before preparing the opinion, your patent attorney will need to conduct a search of existing patents, claims, trademarks, and other documents (all prior art). The search will identify protected IP that is relevant to your product or technology and help your attorney determine whether there are any potential infringement risks.
- Provide detailed information: To prepare the opinion, your attorney will need detailed information about your product or technology, including its intended use and any potential uses. All relevant information pertaining to your invention should be disclosed including drawings, diagrams, functions, and preparation methods.
- Review the opinion: Once your attorney has given you the FTO, review it carefully to ensure that you understand the risks and limitations associated with your product or technology. If the opinion identifies potential infringement risks, you may need to negotiate licenses or make changes to your product to avoid infringement.
- Get an updated FTO: As you continue to modify and improve on your product, other people might too! Another FTO might be needed further down the line to stay up to date on all other new patents and IP. The last thing that you want to do is infringe on another patent holder’s rights.
With an FTO in hand, you’re ready to create, manufacture and distribute your products without fear of impinging on someone’s intellectual property rights.