Freedom To Operate:

Assessing future risk is key to a successful business. Most companies would prefer to know if a new product will subject them to an increased risk of a patent infringement suit. If your company is developing a new product or process, it is usually prudent to consider obtaining a Freedom-to-Operate (FTO) Opinion (sometimes called a “Right-to-Use Opinion”). An FTO Opinion is a detailed legal opinion from a patent attorney concerning whether a new product or process may possibly infringe any active patents or pending applications, including those that the company is not aware of. It will typically involve the attorney reviewing the new product or process that the client is developing, conducting a thorough patent search for similar technology, analyzing the results of the search, and determining the relative risk of infringement by the new product or process.

An FTO Opinion is not a patentability opinion. It doesn’t seek to determine if a new process or product is patentable (i.e. whether it is likely to be approved by the US Patent and Trademark Office). Instead, it seeks to determine whether the new process or product might infringe on the claims of existing patents, to what extent, and what the relative risks are. 

If few risks of infringement are noted, your company can feel confident moving forward with its current product development plans. Alternatively, if the analysis determines that substantial risks exist, your company may want to consider strategies to mitigate the risk, including halting development, pursuing an alternative non-infringing design, preparing opinions that seek to invalidate the existing patents, seeking to license the patented technology, or acquiring the patent holder. 

Investors looking to acquire the assets of target companies may also desire an FTO Opinion to determine the relative risk of a target company's products or processes infringing on other patents. An FTO Opinion may help to identify in advance any prior art that could adversely affect the value of the target company.

An FTO Opinion may also be useful if your company is ever accused of patent infringement. By obtaining an FTO Opinion in advance of the development or use of potentially infringing technology, the opinion can be relied on by an accused infringer to defend against infringement. It may also show that the accused exercised caution in bringing the new product to market, and made a good-faith attempt to avoid infringement.

Carr & Ferrell’s experienced patent attorneys can help review your new process or product, perform a comprehensive search for any existing patents or applications that your process or product may infringe upon, weigh the relative risks of each to your business, and provide you with a tailored Freedom-to-Operate Opinion that you can rely upon. Once the relative risks are known, C&F attorneys can also provide strategic advice regarding how to proceed.