[IP Rights] How to tackle the outcomes of a 'freedom to operate' study?

Prevention is better than cure is true for any domain of work, but is especially relevant for the Intellectual Property domain. Before you take a step towards innovation, or the promotion or commercialiation of that innovation, it is important to ensure that it does not already belong to someone else. Even if you do not intend to protect your innovation, it is essential to ensure that it is not already protected. The first step in any such scenario is to conduct a freedom to operate study, to ensure that you are free to go forward.

The various angles of the freedom to operate study are:

1. Geography – A study conducted for a particular industry holds good for the practise of a product/ technology in that particular geography. A new study has to take place when re-launching the product or use of technology in a different geography.
2. Availability of patent data – Do you or your agency involved in research have a patent data of the geography in question? Is the data in a foreign language or in the researcher’s spoken language? Is there a translation available for patent data in the required language? Is the data a human-translated or a machine-translated version? Is the complete patent document available or is it restricted to bibliographic data only? Is the patent data available for a time period of 20 years back? Answers to each of these questions may vary based on the depth of the search.
3. Time – Whenever a practise or a launch of a product is being planned, the search holds good for that particular day. If the launch is delayed by a few months, a new study, or at least an incremental study, is to be conducted to ensure that you have the freedom to operate for a particular product/ technology.
4. Applicability of the cited patents – If there is a relevant patent that is found, some of the embodiments described in the patent may be from a different field of business. So, in such a case, is the patent applicable? This is a very subjective question. However, in most cases the answer may be yes, considering the aspect of broadness of the claims. It is also important to note that it depends on the geography in which you are analysing the patents. In a particular geography, the law may limit the claims to the embodiments. Whereas, in other geographies, the embodiments are only for the purpose of illustrating and exemplifying the claims and not to limit them.

The freedom to operate study can result in one of two conclusions; a company either has a freedom to operate or does not.

If you have a green signal in the freedom to operate study, you are free to move ahead for that particular geography to commercialise the product or practise the technology. However, there are few caveats attached to such studies:

• Altering the product: If you change the specification of your product or enhance it, you wiwill need to carry out another freedom to operate study on the incremental elements of the changed product specification.
• Human error, which may occur even after performing an exhaustive study.
• The patent database used, and its language and coverage.

In the case, where your freedom to operate report gives you a red signal, the following considerations become important:

• How many months/ years are left for the blocking patent to expire? If the period is smaller, is it feasible to wait till the patent expires? If the answer is yes, then you are clear to move ahead with your product after the wait period is complete.
• Checking whether licensing the technology from the owner of the patent is an option. If you feel that licensing of a technology will not adversely affect the commercials of the product, then you may opt for getting into talks with the owner for the licensing deal.
• However, there may be a chance that the patent owner is adamant not to license out the technology to you; or rather your commercials would be hugely skewed if you go forward with the licensing deal. In such a scenario, the ideal option would be to work around the existing patent. When we say ‘work around’, it implies that the patent attorney and technocrats work together to find an alternative to overcome the blocking patent. In most cases this would involve eliminating or replacing one of the elements of the patent to reach the same/similar results. In other cases, reverse engineering of the product of the patent holder would help in working around the blocking patent.
• Would changing your business goals be an option? For example, if the location where you are manufacturing the product is leading to infringement, then maybe altering your manufacturing location would overcome the infringement. In another scenario, where your manufacturing location does not make you an infringer, but your assembling process location makes you an infringer, then you could consider the option of shifting the assembling process to a different geography where the blocking patent doesn’t exist.

Changing your sales point to another country: For example, US and Mexico have commercially open borders, however if selling a product in US makes you an infringer, then changing your sales strategy to sell only in Mexico would be a viable option. Though it may result in reduced sales, you may still be able to access the US market marginally.

A freedom to operate study provides you with ways to shape your path of action. It gives you a chance to think before you take a step, and chart a feasible path. Just like all other aspects of Intellectual Property, getting an expert opinion on the outcomes of a freedom to operate study is always advisable. So if you plan to venture into marketing or commercialisation of any technological product/innovation, be sure to stay away from possible infringement of a patented technology.

About the authors:

This post is co-authored by Gaurav Singhal and Ananya Dhuddu. Gaurav is the Director and Principal IP Attorney at Patracode Services Pvt Ltd. A B.Tech in Computer Science, LLB from IIT-Kharagpur and Masters in Business Laws from National Laws School of India University, Gaurav has been working in the IPR field since many years. Ananya Dhuddu is an IP Analyst at Patracode Services Pvt. Ltd. She is a Life Sciences graduate from Pennsylvania State University, USA. She holds a PG Diploma in Medical Law and Ethics from National Law School of India University, Bangalore and a PG Diploma in IPR and Patent Management from GIIP, Bangalore

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