Intellectual Property FAQ’s
A Freedom to operate (FTO) search enables a company/individual to analyze if his product/process is infringing on in-force patents/patent applications, belonging to a third party. The FTO search is jurisdiction specific, for example, if a company wants to release a product in India, the FTO search done will look for patents/patent applications in India. An FTO Search is a search among the claims of in-force patents/patent applications for specific elements/steps of a product/process. A comparison is done between elements/steps of a product/process and individual claims of identified in-force patents/patent applications to determine the freedom to operate.
If freedom to operate exists for a product, it doesn’t necessarily mean that the product is patentable as well. nnIn order to understand the logic behind the answer, one has to be aware of the various scenarios under which freedom to operate for a product might exist.nnFurther, it must be noted that freedom to operate is jurisdiction specific, for example, freedom to operate for a product might exist in India and not in US. nSome of the scenarios under which freedom to operate for a product might exist are listed below: nn• The product has been disclosed in an expired patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.n• The product has been claimed in an in-force patent in a certain jurisdiction (example: US) and no such relevant patents have been granted in another jurisdiction (example: India). In this case, freedom to operate will exist for the product in Indian and freedom to operate for the product will not exist in US. Further, in this case, the product will not be patentable.n• The product has been disclosed in a patent document, but not claimed in the patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.n• The product has been disclosed in a non-patent document. In this case, freedom to operate for the product will exist, however, the product might not be patentable. n• Element(s) of product has not been disclosed. In this case, freedom to operate for the product will exist, and the product might also be patentable (if it fulfils patentability requirements). n
The criteria for the patentability of a product/process are that the product/process should be subject matter, useful, novel, non-obvious and enabled. An invention will be patentable only if it passes the aforesaid criteria. If a product/process is patentable, then it may NOT necessarily have freedom to operate within a particular jurisdiction because the criteria for assessing infringement for ascertaining freedom to operate is based on different principles when compared to patentability. Infringement is assessed based on whether a product/process falls within the scope of a patent in force.nnA product/process may be patentable and still infringing if it falls within the scope of patent claims of another patent that is in force.nnFor example, consider a case of a product A with elements A, B, C and D and an in-force patent D1 covering a product B with elements A, B and D in one claim. Due to the presence of the extra element C in the product, the product would be novel and non-obvious in light of the cited prior art (here we are assuming that there are no other relevant prior art) references. But if the owner of the patent covering the product A practices the product in that particular jurisdiction, he would be infringing on D1 as all the elements of D1 are present in product A.n