The patent system fosters innovation by providing inventors with a limited period of exclusivity, typically 20 years from the filing date, to prevent others from replicating or profiting from their inventions. In the realm of intellectual property (IP), distinguishing between patentability and Freedom to Operate (FTO) searches is essential for businesses, inventors, and organizations navigating the complexities of patents. Although both types of searches are vital, they address distinct objectives. The outcomes of these searches, while overlapping in some areas, often result in different sets of relevant prior art.

Patentability searches primarily focus on evaluating the novelty of an invention by analyzing the patent description and often overlook the claims. In contrast, FTO searches concentrate on the claims of existing patents to assess potential infringement risks by comparing the invention with these claims.

What is a Patentability Search?

A patentability search, also referred to as a novelty search, evaluates whether an invention fulfills the criteria for patent protection. The main goal is to identify prior art, such as existing patents, publications, or public knowledge, that may influence the invention’s novelty and non-obviousness.

Key Objectives of a Patentability Search:

1. Assessing Novelty: Verifies that the invention is new and has not been disclosed in existing prior art.
2. Evaluating Non-Obviousness: Determines whether the invention would be obvious to someone skilled in the relevant field.
3. Identifying Patentable Features: Refines the invention’s claims to maximize the scope of patent protection.

Process:

1. Search patent databases, such as paid databases (Derwent innovation, orbit, patseer etc), Google patents, USPTO, EPO, and WIPO.
2. Review non-patent literature, including academic papers, technical documents, and online resources such as IEEE, research gate, Google scholar, CiteSeerX, etc.

Outcome:

The results of a patentability search provide insights into the likelihood of obtaining a patent. Favorable results may lead to filing a patent application, whereas unfavorable findings can guide necessary modifications to improve the invention’s patentability.

What is a Freedom to Operate (FTO) Search?

An FTO search, also known as a clearance search, determines whether a product, process, or service can be commercialized without infringing on third-party patents. Unlike patentability searches, FTO analyses focus on identifying potential legal risks rather than assessing an invention’s novelty.

Freedom to Operate ensures that businesses can bring their innovations to market without infringing on active patents owned by others. The process typically begins with a thorough search of patent literature to identify published or pending patents that may pose risks, followed by legal evaluation.

Read Also: What is Freedom to Operate Search? FTO Clearance - Complete Guide

Key Objectives of an FTO Search:

1. Identifying Blocking Patents: Discovers patents that could potentially be infringed upon.
2. Assessing Legal Risks: Evaluates the potential for litigation or the need for licensing agreements.
3. Ensuring Market Viability: Helps clear the pathway for product or service commercialization.

Process:

1. Search active patents in the jurisdictions where commercialization is intended.
2. Analyze patent claims to identify overlaps with the proposed product or process.
3. Assess legal factors, such as patent expiration dates and ownership details.

Outcome:

An FTO search helps businesses identify potential legal barriers, enabling them to make informed decisions regarding licensing, redesigning products, or adjusting market strategies to avoid infringement.

Key Differences Between Patentability and FTO Searches

Importance of Conducting Both Searches

Conducting both patentability and FTO searches is vital for developing a comprehensive IP strategy. While a patentability search ensures an invention’s originality, an FTO search addresses potential risks associated with commercialization. Together, they provide:

1. Strategic Protection: Ensures that innovations are both patentable and free from infringement risks.
2. Informed Decision-Making: Helps allocate resources effectively and avoid legal disputes.
3. Market Competitiveness: Facilitates the development and commercialization of unique, legally secure products.

Conclusion

Understanding the distinction between patentability and FTO searches is fundamental for leveraging intellectual property effectively. While patentability searches focus on securing exclusive rights through patents, FTO analyses emphasize avoiding conflicts with existing patents. Together, these searches lay the foundation for a robust innovation and commercialization strategy, ensuring compliance with legal requirements and maintaining a competitive edge in the market.

Conducting patentability and FTO searches separately is essential for businesses and inventors seeking to optimize their IP strategy. Each search serves a distinct purpose and provides critical information for different stages of the innovation lifecycle; patentability for securing rights and FTO for mitigating risks during commercialization.