Freedom to Operate Search

Freedom-to-Operate-Search
Before launching a product or service in the market, it is important to conduct a freedom to operate (FTO) or clearance search. In order to assess the risk of potential infringement and avoid subsequent litigation, the organization should proactively perform a FTO search to identify any alive patents that may potentially map on to the features of the product or service to be launched.Generally, the FTO search is restricted to a particular jurisdiction, however, it prudent to search for international applications which can potentially enter the target jurisdictions in order to be absolutely sure of obtaining a patent. An FTO search involves claim specific search to locate claims that read on to the features of the product or service to be launched in the market. Specifically, following points should be focused while conducting an FTO search:

  • Capturing the enforceable patents and patent publications having features similar to those of the product or service
  • Providing legal status of the patents identified so that the clients are aware about the expired patents that exist in the public domain
  • Whether the patents identified are active or expired or can be revived at a later stage
  • Providing a mapping between features of the product to be launched vis-a-vis claimed elements of the patent references found in order to indicate the extent of mapping

We at Effectual Services have assisted clients in a number of FTO searches for various jurisdictions worldwide on a variety of technology domains including Computer Science and Information Technology, Electronics and Communications, Electrical, Mechanical, Chemical, Biotechnology, Pharmaceuticals and Life Sciences domain. Effectual Services has an experienced team, consisting of Engineers, Bachelors, Masters and PhDs and many of our team members have a Law degree in addition to the technical degrees making them ideal for Intellectual Property related services.

Recent Projects

Patent Evaluation

One of the patent brokerage companies needed assistance in patent ranking and bucketing. Through our indigenous method of manual screening and ranking, we assisted the client in the evaluation of patent portfolio and identified patents worth monetizing. For the high value patents, we developed EoU charts that indicated commercial prospects.

 

Asian Language Search

We assisted a leading law firm in conducting native Chinese language searches. The objective was to uncover prior art references in the Asian languages that do not have an English language counterpart. The results identified were carefully screened in English language as well as native languages.

 

Patent Searches

A US-based technology company wanted to develop a patent filing strategy. The objective was to identify white spaces and technology which would enable them to channelize their research and development initiatives. Our team structured a methodical search strategy that comprised of defining apt technology taxonomy, identified and classified patents pertinent to the taxonomy. The search enabled the client to take well-informed decisions and save cost.

 

Patent Licensing Support

Effectual assisted a US-based company in successfully out-licensing more than 50 patents to multiple players, which resulted in maximizing revenue more than 60 million dollars. We worked closely with the company’s attorney to identify target products and companies and developed Evidence of Use charts and infringement contentions. Our team provided support in preparing claim to specification charts and prepared responses to invalidity contentions.

 

Patent Drafting and Filing

A California-based technology company wanted to protect their innovative software and associated products. Despite the stringent patentability criteria for software and business method arts, we assisted them in building a strong patent portfolio. We adopted a robust approach that included a strategically planned pre-filing search to locate patents in the similar technology domain and helped them to modify and re-draft the patent claims. Through this laborious process, we were able to procure a strong patent portfolio for the company and helped in increasing their revenue.

 

IP Support Services

A Silicon Valley-based IP law firm was facing challenges related to managing its docketing backlog. Effectual supported the firm through a dedicated team of paralegals who maintain and manage patent dockets and coordinate with the concerned attorneys in preparing filing forms, sending reminders, tracking deadlines, assignment documents, and document classification and management.

 

Information Disclosure Statement (IDS)

A leading corporate filed a significant number of patent applications and faced challenges with the preparation of their IDS forms. The arduous task involved tracking and identifying the IDSs filed globally. We assisted the client in gathering the prior art from various patent databases and track the references filed in the IDSs globally. We identified all the references in the patent application and submitted the IDS as per the guidelines defined by PTO.

 

Proofreading Services

A US based law firm based was facing challenges in proofreading patent applications. The objective was to highlight clerical errors and check the subject contextually. The client partnered with us to undertake the paralegal task and minimize the office action. We identified the clerical errors such as spelling, bibliographic details, consistency in terms, claim dependencies, etc. Our service yielded significant benefits in terms of minimizing work pressure and helped the client to focus on primary areas.

 
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