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Why is Freedom-to.Operate important? I have a lot of questions

Start-ups and SMEs are often challenged with large IP portfolios by big competitors. These are my questions:

  • What is an FTO?
  • Has the scope of FTO changed in the world of I4R?
  • When to conduct an FTO?
  • Relevance of FTO in today’s crowded patent space
  • What is the relationship between a strong patent/IP portfolio and FTO
  • What are the pros and cons of conducting and FTO?
  • What are the next steps once a threat has been identified?
  • Risk management: Approaching the IP owner to obtain a license to bridge the FTO risk
  • University spin-outs and FTO: what are the risks and how to go about performing the FTO?
  • At what stage the FTO becomes irrelevant?
  • How to work within the “grey zone” of an FTO?
  • FTO in technologies involving standards

Thank you!

 


Dear @barbapappa

Your post has many questions I try to resolve. Please note, this not a legal recommendation and my personal opinions. Please consult your patent lawyer in any case.

  • What is an FTO?
    • In my definition, the assumption to operate freely your business without infringing any right of others. Please note, often FTOs are mentioned in the context of patent rights, but could be also understood for other rights or regulations.
  • Has the scope of FTO changed in the world of I4R?
    • I don't understand the term I4R.
  • When to conduct an FTO?
    • Ideally before, during and after a development of a product, service or business. It's a recurrent task any business owner shall have in mind.
  • Relevance of FTO in today’s crowded patent space
    • The relevance is even more important, because more patent rights could apply for your business. Modern technologies and services offer convenient solutions for FTO.
  • What is the relationship between a strong patent/IP portfolio and FTO
    • I would say the only relationship is that both shows a professional IP management. Ip rights don't provide with freedom to operate and freedom to operate doesn't protect your business case from others.
  • What are the pros and cons of conducting and FTO?
    • Pros: You fulfilled your duties as a business owner to ensure proper business operations and continuation, you may identify potential partners, other public available solutions you may integrate in your services or products.
    • Cons: FTO are effort and can cause irritation. Therefore, I recommend involving  IP experts.
  • What are the next steps once a threat has been identified?
    • Keep calm and call your lawyer. If you write her an email or letter, please point out that you seek legal advice.
    • The lawyer will review your potential threat and does an infringement analysis and will advise. Based on the circumstances, the lawyer may ask if you could work around that patent, buy a license, invalidate a patent or stop business for this product.
  • Risk management: Approaching the IP owner to obtain a license to bridge the FTO risk
    • Depends on the specific case. It's perhaps better to ensure FTO with a license instead with risking a legal dispute
  • University spin-outs and FTO: what are the risks and how to go about performing the FTO?
    • Especially University spin outs could rely on the patent department of the university to guide, support or perform the FTO. A spin-out could risk its funding if no proper FTO was performed. Usually investors and support programs require any form of an FTO analysis.
  • At what stage the FTO becomes irrelevant?
    • When you stop your business.
  • How to work within the “grey zone” of an FTO?
    • Difficult to say and depend on each case. In general avoid gray zones, they may work out for a time,  but they may surface back in a situation where you don't want it.
  • FTO in technologies involving standards
    • Usually the required standards organizations have a list of mandatory patents and define license agreements.

Please feel free to contact me or continue the discussion here.