How confident are you that your next product launch or commercial innovation does not infringe anyone else's intellectual property rights? The fact that you're reading this article suggests that you are well aware that this is universally a bad (and usually expensive) mistake to make.
However, obtaining certainty about freedom to operate can be a complex and expensive process. The better you understand how the intellectual property landscape is structured, the better you can manage this risk and utilize resources necessary to do this.
Using the 6T’s framework, you can quickly get a sense of the potential magnitude of a freedom to operate issue. This will help you to make faster and more effective business decisions, and potentially save a lot of time and money.
There are essentially two phases to a freedom to operate analysis. First you need to prepare for and conduct the search, and then you need to analyse the search results to see whether they may in fact stop you, and if necessary, what you can do about it.
This is the first of a two-part series on freedom to operate put simply with the 6T’s framework. In the second part, we will look at how the 6T’s framework assists with the analysis phase.
Just to read cap, the 6T’s are: Type of IP, Time (until expiry), Territory, Terminated (the status of the IP right), Technical scope of the monopoly, True monopoly? (validity).
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My two most recent articles were:
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Other articles in the ‘6Ts’ series:
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Phase 1 –preparing for and conducting the search
Type of IP
Intellectual property rights have a habit of overlapping in the protection that they can provide for a given good or service. The message here is to be careful. It may not be enough to have only a patent or trademark search undertaken for your next product launch - as expensive as that may be.
For example if the product is of a particular shape or design it may be necessary to search also for design registrations (designed patents), and of course, you should also consider other common law rights, for example in brands.
Theoretically, you should not have to do any searches to ensure that you are clear from copyright infringement. This is because to infringe copyright, one must copy the protected work. However this does raise a useful reminder to have adequate procedures in place within the organization to ensure that employees working on new products do not infringe another’s copyright. This is a surprisingly common problem, for example in relation to product packaging.
Type of IP
Once you have adequately set out what you propose to do, the search can be properly mapped out. To those who are not familiar with intellectual property freedom to operate analyses, the sad news is that there is no one single database that you can use that covers all intellectual property rights. In fact it’s worse than that, even within a particular type of intellectual property right (for example patents), one should search multiple databases to increase the likelihood that the search is comprehensive.
This raises an important point – it’s actually not possible to have a search that can be guaranteed to be 100% accurate. Instead, by making a series of intelligent decisions you can actively reduce the risk entailed in a search. You should engage a qualified, specialist intellectual property searcher who will help you minimize risk.
Time (until expiry)
An awareness of the time over which the monopoly extends for the different intellectual property rights can help narrow down the search. For example depending on the type of situation, there may be little point in identifying patents that have long expired. (Having said that, depending on the circumstances such patents can be very handy prior art to assist the invalidity side of the analysis, if required. It can be easier and cheaper to have at least the patent part of the invalidity search done at the same time as the infringement search in this way.)
Territories (in which IP is held/registered)
If you have exhaustively identified the territories that you will likely be marketing, selling or producing your product new service then you can further restrict the search according to those.
In stage one, it is important to map out which territories you may be interested in the short, medium and long term.. If properly planned, the freedom to operate analysis will be more effective as it will allow you to cost effectively deal with future potential territories.
Terminated (ie the status of the IP)
Some of the search engines and databases allow one to restrict the search results to only those intellectual property rights that are currently in force. However, care should be taken in relying on the database to this information. It’s usually much more prudent to identify all possible intellectual property rights, and then independently confirm their status.
Technical Scope of the monopoly
The technical scope of the monopoly is another example of the great usefulness of using a specialized searcher to do the search for you. While keyword searches are a useful guide, they rarely if ever give a comprehensive view of the intellectual property rights covering a particular new product or service. Instead, there are other strategies used to search with a particular technical scope. Thus, for example in the area of patents, the IPC (International Patent Classification) classes are used. Of course, the best searchers use a combination of different overlapping strategies in order to further minimize the chances that a particular intellectual property right has been missed in the search. Thus for example in the area of pharmaceuticals a searcher may commonly use chemical abstracts registry numbers, keywords in a Boolean search, IPC classes etc.
True monopoly? (validity)
Phase one doesn’t include any details analysis of the validity of the a few identified intellectual property rights. Instead, however invalidity should be taken into account when designing and conducting the search. As stated above, it may be useful to include historical intellectual property rights that would clearly have expired so that they can be used for prior art.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.