Freedom to Operate and Opinion Counseling
A properly executed freedom to operate (FTO) search and, if necessary, opinion can be critical for any company with something to lose. Our personalized approach to our clients ensures that the task is done right.
The FTO Search
The FTO search uncovers any relevant patents and/or published patent applications that may be problematic to a given product. Ideally, this search should be done before significant expense is incurred on product production, as we would want to make sure the product can be modified to avoid liability. Licensing from the patent holder is also an option, but putting a company in a position in which they must license because production has already begun or is completed may not be an ideal situation.
The infringement opinion evaluates whether a given product infringes one or more identified patents. The importance of the formal opinion is to avoid treble damages should the company be liable for infringement. During the FTO search, certain patents and published patent applications may come across as clearly irrelevant for one or more explicable reasons. The infringement opinion should likely focus on the patent applications that are potentially problematic and ones in which a prima facie argument of infringement can be made.
The value of the company may influence the range of uncovered patents that should be included in the opinion. Small companies who are starting out may not have the financial resources to defend against every potential threat, but larger companies may very well want to avoid the risk of treble damages.
The invalidity opinion evaluates whether a potentially problematic patent (i.e., one in which the client's product may reasonably infringe) is valid by, for example, determining that the patent's claims are not novel or are obvious. Obtaining a non-infringement opinion may be the first and safest step, but identifying legitimate reasons for patent-invalidity can also be a useful tool so long as the rationale in the opinion is legitimate (i.e., not a stretch).