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Freedom-to-Operate Toolkit
Practical Law Toolkit w-010-8047 (Approx. 6 pages)
Freedom-to-Operate Toolkit
by Practical Law Intellectual Property & Technology
| Maintained • USA (National/Federal) |
Resources concerning freedom-to-operate (FTO) studies and opinions, which patent counsel may consider when analyzing a client's patent infringement liability risk or preparing an opinion that a client may use as a defense to a willful or induced infringement claim.
A freedom-to-operate (FTO) analysis can provide valuable information to a client by identifying and quantifying patent infringement risk:
- Before or during product development.
- While conducting due diligence as part of a potential acquisition or licensing transaction.
- When a third party asserts a patent infringement claim against the client.
An FTO analysis typically requires patent counsel to:
- Understand the client's activities generating the need for an FTO analysis, which may also require counsel's thorough understanding of certain product designs.
- Identify relevant patents for the FTO study.
- Evaluate the risk each patent poses to the client's activities by:
- construing each patent's claims;
- comparing the construed claims against the client's activity to identify infringement risk; and
- determining potential claim invalidity for any claims posing a high patent infringement risk.
After counsel conducts the FTO analysis, counsel should:
- Determine whether to prepare a written FTO opinion.
- Determine the scope of a written FTO opinion if the opinion may provide the client with a defense against a claim of:
- willful infringement; or
- induced infringement.
- If a written opinion is warranted, prepare, deliver, and follow up on the written FTO opinion.
This Toolkit contains resources that provide practical guidance on conducting FTO studies and preparing an FTO opinion.