In today's innovation-driven marketplace, protecting your invention and safely bringing it to market go hand in hand. However, many businesses, especially startups and R&D teams, often confuse patentability searches with freedom to operate (FTO) searches. While they might sound similar, they serve entirely different purposes, and understanding this difference can be the key to avoiding legal risks and maximizing the value of your innovation.
What is a Patentability Search?
A patentability search is conducted to determine whether your invention is novel and non-obvious, i.e., whether it qualifies for a patent grant. The patentability search is conducted to evaluate if the idea is new (novel) and involves an inventive step (non-obviousness) over existing technologies in the public domain (called prior art).
When is Patentability Search conducted?
A patentability search is generally conducted before filing a patent application, during the early stages of product development or invention disclosure. This search helps determine whether the invention is novel and non-obvious in light of existing patents and publications. By identifying similar prior art, inventors and companies can make informed decisions about whether to proceed with drafting and filing a patent application, refine the invention further, or explore alternative innovations.
Conducting the patentability search early helps save time, effort, and costs associated with filing an application that may ultimately be rejected due to lack of patentability
For an instance, a company has created a new herbal skincare formulation that blends neem, tulsi, and aloe vera in a specific ratio designed to treat acne. Before filing a patent, the company needs to determine whether this formulation qualifies as a new and non-obvious invention. This is where a patentability search is conducted.
While conducting the patentability search, the following questions are explored:
- Has anyone else already patented or published a formulation using this same combination of ingredients?
- If the particular ratio or the process of preparing is novel and not previously disclosed?
- Does the formulation deliver an unexpected technical advantage, such as a "synergistic effect"? For example, does combining these ingredients in the claimed ratio yield significantly better results than when used individually or in different proportions?
If the patentability search reveals that no existing documents or patents disclose these specific features, there is a strong possibility that your formulation meets the criteria for patentability, i.e. novelty, inventive step (non-obviousness), and industrial applicability.
What sources are searched in a patentability search?
To get a comprehensive understanding of whether your invention is truly new, there are multiple information sources are reviewed, including:
- Granted patents: To check if similar formulations have already been legally protected.
- Published patent applications: Even if a patent hasn't been granted yet, the application might still disclose a similar idea.
- Scientific journals and databases: Articles and research papers in the skincare, herbal medicine, or pharmaceutical domain that may describe similar combinations.
- Non-patent literature (NPL): Technical blogs, conference papers, theses, product brochures, and other industry publications that could disclose similar concepts outside the patent system.
Importance of Patentability Search
A thorough patentability search helps avoid wasting time and money on filing a patent application that may be rejected due to prior art. It also helps position your patent claims more strategically by identifying what's already known, and more importantly what's not.
What is a Freedom to Operate (FTO) Search?
A Freedom to Operate (FTO) search is conducted before launching the product in the market, and its purpose is completely different: to ensure you are not infringing any valid, enforceable patents held by others.
This FTO search is about risk mitigation, i.e. checking whether there are active patents in your target markets (like India or the US) that could legally block your ability to make, use, or sell your product.
A Freedom to Operate (FTO) search is conducted to check if launching or selling a product will infringe any existing patents that are currently in force in a particular country or region.
Why do you need FTO if you already did a patentability search?
It is a common and reasonable question, especially for startups and R&D-driven companies preparing to launch a new product. After all, if the invention is new, inventive, and patentable, why would one need to search again? The key lies in understanding that a patentability search and a freedom to operate (FTO) search serve two very different purposes. While a patentability search helps determine whether your invention is eligible for protection under patent law, an FTO search focuses on whether the commercialization of your product could infringe existing third-party rights. In simple terms: one checks whether you can get a patent, and the other checks whether you can sell your product without infringing someone else's. Both are essential, but they answer different legal and strategic questions
Even if the formulation is new and patentable, someone else may have a valid patent on:
- A particular extraction process of the product,
- A preservative or stabilizer included in the formulation,
- A delivery mechanism like nanoemulsion,
- Or even the packaging design or container shape.
If any of these fall within someone else's active patent claims, one could face legal action, even if the company has a granted patent of your own.
The main purpose of conducting the FTO search is to assess legal risks of patent infringement before commercialization.
When is it done?
Before launching a product in the market, especially in target jurisdictions like India, the US, or the EU.
What Sources Are Searched in FTO Search?
To get a comprehensive understanding of whether your invention is not infringing other patent, the FTO search focuses on identifying active and enforceable patents, including:
- Granted patents in countries where you plan to make, use, or sell the product.
- Published patent applications (for awareness of potential future risks).
- Patent claims: to check if your product falls within their scope.
- Legal status: only in-force patents are considered risky.
- Patent families: to track protection across multiple jurisdictions.
Unlike a patentability search, FTO is limited to patent documents and does not include scientific or non-patent literature.
For better understanding, let's continue with the same skincare product instance. Imagine the patent application has been filed (or even granted), and now the applicant wants to manufacture and sell it in India or the US.
Now, the FTO search is conducted in the targeted country, to examine:
- Are there any existing patents (still in force) that claim a similar formulation, extraction method, or packaging technology, which are outside the claims filed in that patent
- Will any of those patents be infringed if you sell the product?
- If yes, can the applicant redesign the product to avoid infringement?
Even if the product is patentable, it does not guarantee that you have the freedom to sell it without infringing someone else's patent.
Why Both Searches are Prudent
It is a common business mistake to assume that owning a patent automatically grants freedom to use or sell a product. That's not true. A company can hold a patent for one feature of a product but still infringe another company's patent on a different feature.
Further, in another instance, a company develop a unique electric toothbrush and file a patent on its vibration technology. The company may assume they are good to go. But, without the FTO search, they could still end up infringing a competitor's active patent on the brush head design or charging dock mechanism, even if those aspects are not in your patent.
The oversight of infringing active patents can result in:
- Costly litigation
- Product recalls
- Licensing demands
Conclusion: Protect Before You Produce, and Clear Before You Launch
For companies, especially in sectors like pharma, healthcare, consumer goods, engineering, or software, understanding the difference between patentability and FTO is not just a legal necessity, but a strategic business move.
- Patentability searches save money by preventing investments in unoriginal ideas.
- FTO searches save businesses from costly infringement disputes and delays.
Both serve different stages of the innovation lifecycle and should be treated as essential checkpoints, not optional steps.
Innovation is no longer just about ideas it is about smart protection and safe commercialization. Companies that integrate both patentability and FTO searches into their product lifecycle are better positioned to scale confidently, avoid legal surprises, and build long-term IP value.
For any business planning to file patents or launch products in multiple markets, conducting both searches is a wise investment, not just for IP protection, but for business growth and peace of mind.
For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in
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.
