India: Freedom To Operate – Identifying Inventions In The Public Domain

Last Updated: 20 December 2018
Article by Heena Lamba

The World Intellectual Property Organisation (WIPO), in 2009, started Technology and Innovation Support Centre (TISC) program. This program provides innovators in developing and least developed countries (LDCs) access to high quality technology information from available patent and non-patent literature and related services, helping them to exploit their innovative potential and to create, protect and manage their intellectual property (IP) rights1. India formally became part of this program when Department of Industrial Policy and Promotion (DIPP) made an agreement with WIPO on November 13, 20162 for establishing TISCs in order to promote IPR culture. Services offered by TISCs may include3:

  • Access to online patent and non-patent (scientific and technical) resources and IP-related publications;
  • Assistance in searching and retrieving technology information;
  • Training in database search;
  • On-demand searches (novelty, state-of-the-art and infringement);
  • Monitoring technology and competitors;
  • Basic information on industrial property laws, management and strategy, and technology commercialization and marketing.

Under this program, WIPO has designed various manuals or guides to facilitate learning 'tools of interest' that will help its member countries meet the objective of the program. One such guide for which WIPO is extensively providing trainings in India is "Guide on identifying4 and using5 inventions in the public domain". The guide teaches a three-stage process for searching and analysing published patent documents using the tools of freedom to operate (FTO) determination.

Patent being an important IPR with respect to its commercial value, such guides are widely utilised by innovators for searching patent literature. Patent searches can be performed for three types of objectives:

  • To determine novelty of an invention;
  • To identify if any patent is infringing client's patent or invention or whether a new invention will infringe some enforceable patent;
  • To conduct FTO for checking commercialisation status of a given invention.

Freedom to Operate is a search tool which helps in identifying commercial value of an invention. It helps a person to know whether their invention or product of their interest can be commercialised or not or whether it infringes any enforceable patent.

Apart from giving a clear picture of commercialisation of new products, it opens up multitude of those inventions which come in the public domain and at a given point of time can be commercialised without calling out any legal prosecution. Inventions usually come in public domain mainly by virtue of abandonment, revocation, withdrawal, ceased, expired or being disclaimed by the applicant.

Once the objective of the search is decided, FTO search can be performed following the three basic steps i.e. Describe, Search and Analyse6.

I. Describe

  • Gather information from client about the invention - what is the invention, what does the client plan to do with it, where does the client plan to use the invention and when does the client plan to use the invention?
  • Describe the invention and its planned use.
  • Information received from the client can be summarized in the format as provided in the annexure7 to the guide on identifying inventions of interest.
  • The format as provided by annexure divides the gathered information under two heads i.e. Technical information about the invention (overview, technical description, essential features, optional features, functional features, background information, differences and distinguishing features) and Business information (Countries and time frames to be searched) about the invention.

II. Search

  • Break down or deconstruct the invention into parts and identify keywords corresponding to every deconstructed part of the product as well as the process.
  • Functional features can also be used to create keywords for an appropriate search.
  • Choose search parameters relevant to the search - key words, International Patent Classification (IPC) codes, suitable databases based on the countries to be searched, year(s) suitable for the time frame to be searched and language in which information is required.
  • Test devised keywords and corresponding IPC codes for relevance.
  • Search for patent documents with claims that might cover the invention or one of its essential features, and identify potentially relevant documents to analyse.

III. Analyse

  • Determine the legal status of each analysed patent, whether it is still in-force or is it enforceable in the desired territory or country or does it fall under public domain for one or more of reasons of being expired, abandoned, invalidated, or revoked or is the legal status ambiguous or unsettled.
  • Analyse claims of each potentially relevant patent document to determine their scope of patent rights.
  • Recommended: Construct a broad independent claim based on client's invention including all its essential features. This broad claim can be expediently compared with the claims of the relevant patents for analysing potential covering or infringement on relevant enforceable patent.
  • Response to comparison made between client's invention and relevant patent documents may be given in terms of yes or no or cannot be determined.

One thing is always certain even for such stretched out searches like FTO that no matter how extensive search you have conducted but one cannot be entirely sure that they have analysed all the relevant patent and non-patent literature available on the subject matter. So, there is always a probability of error, which could be based on following8:

  • how the invention is characterized
  • how the technical disclosure in patent documents is characterized
  • how information was entered into and retrieved from databases
  • quality and content of the databases searched
  • the timeliness of database contents
  • the accuracy of search inputs
  • the scope of the search
  • the quality of support tools such as translation or expansion functions
  • evolution of rules and standards throughout the world

Having known the limitations of FTO, such factors can be kept in mind while describing the invention and searching and analysing the relevant patents to reduce the probability of error to the least.

After conducting FTO search, apart from getting relevant patents, another stream of search result is obtained which identifies patents that are related to the client's invention but have come under public domain. This area becomes important in cases where the client's invention is covering an enforceable patent. In such an event, client instead of leaving his invention would want an alternative way to commercialise his product. Such alternative ways could be found utilising relevant and related patents in the public domain. As a recommendation, instead of directly commercialising the alternative product so obtained, one must carry out FTO analysis again to find if any modification of that patent is already in force.


1. India's Second Technology and Innovation Support Center (TISC) Established at Anna University, Chennai. Available at

2. WIPO Technology and Innovation support centers in India. Available at


4. WIPO Guide on Identifying Inventions in the Public Domain

5. WIPO Guide on Using Inventions in Public Domain

6. WIPO Guide on Identifying Inventions in the Public Domain

7. Annexures to WIPO Guide on Identifying Inventions in the Public Domain

8. WIPO Guide on Identifying Inventions in the Public Domain

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.

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