Bringing a new product to market is a significant milestone. If your company has secured a patent, you might assume you are ready to manufacture and sell your product. However, a patent does not always grant you the right to do so. Another company’s patent could still affect your plans, leading to additional delays and costs after you’ve initially invested in manufacturing, inventory, marketing or distribution.
A freedom-to-operate (FTO) review helps answer a different question than a patent application. Instead of asking whether your invention qualifies for patent protection, it examines whether your product could infringe another company’s patents in the countries where you plan to do business. Because an FTO review serves a different purpose, it can become an important part of planning a product launch.
A patent does not guarantee sales rights
Receiving a patent does not automatically grant you the right to sell your product. Another company may own a patent that covers part of your design, even if your invention qualifies for patent protection.
If you plan to expand outside the United States, patents in those markets can also affect your plans since patent protection is territorial. Therefore, an FTO review can be helpful in examining the countries where you expect to do business.
When to do an FTO review
The timing of an FTO review can affect the amount of options you have if it identifies a potential patent issue. Businesses commonly conduct an FTO review before reaching milestones such as:
- Investing in production equipment or tooling
- Placing large inventory orders
- Beginning advertising or accepting preorders
- Presenting your product to investors or licensing partners
- Expanding sales into international markets including Asia
At these stages, an FTO review can identify patents that could affect your product design, production schedule or launch.
Looking beyond patent documents
An FTO review involves more than reading patent documents. Patent claims use technical language, so reviewing them requires both legal and engineering knowledge. Attorneys with engineering backgrounds can compare patent claims with product designs, drawings and manufacturing methods.
If your company plans to expand into Asia, the review may also include patents in multiple jurisdictions. Looking at patents in each target market can reveal how they could affect your business plans.
Putting an FTO review to work
An FTO review cannot eliminate every patent risk. Factors such as new patents, business decisions and legal disputes can change the marketplace. However, an FTO review can identify issued patents before you commit major resources to manufacturing, marketing or expansion. You can then utilize that information as part of your launch and intellectual property planning.
If you plan to launch a new product, an engineer-led FTO review can identify existing patent risks in your target markets. It can also show whether you need additional patent review before making major investments.