Companies interested in launching a new product in UK conduct FTO patent search to avoid patent infringement. This forms part of a strong business strategy for the company as it ensures that the new product will not infringe any of the existing patent rights. With a view to avoid such patent infringement scenario, the freedom to operate search analysis focuses on a jurisdiction specific patent research. In use, the FTO patent search is part of due diligence needed to ensure that the new product launch does not create IP hassles in the UK market.
A thorough FTO patent search in the UK jurisdiction includes a strategic patent search criteria covering patent assignees in combination with the international patent classification codes. By searching assignees, one can identify all the patents that a company and its subsidiaries own. Also, a review of publicly available patent license agreements indicates how beneficial a market is; if there are many licensing opportunities, the technology is in demand. FTO in UK is also important after the commercial launch of the new product. If you find someone else developing a similar technology, for example by citing your patent, there may be an opportunity for patent licensing. By knowing the international patent classification code of your technology, you can search for other technology in that space and for technologies in alternative markets for further commercial opportunities.
The FTO patent search aimed at the UK jurisdiction involves analysis of the key features of the product that give the new product a competitive advantage. In use, the competitive advantage implies multiple aspects of the product that differentiate the new product from its competitors. Subsequently, at the time of filing for international patent protection, these aspects need the appropriate protection from the patent office. Once you have identified the valuable component, conduct a freedom to operate search on that component to see whether any competitors are also using that technology and if you can patent that within the process.
In preparing a FTO patent search strategy for the UK jurisdiction, firstly we have to consider the legal requirements and structure of the UKIPO. We have to prepare a search strategy that can efficiently handle a significant volume of documents without getting overheated and going overboard. We also have to make sure that the overall patent search effort does not miss any relevant patent record. Thus, most patent law firm consider these two parameters as major and decisive factors for the success of the patent search. They make use of efficient outsourcing services for searching relevant documents on behalf of their clients.
Typically, patent law firm performs the patent keyword search with reference to patents belonging to the broader field like computer and technology or energy and environment. Generally, the patent law firm is able to generate more relevant patent records by combining broad field patents with more specific patent claims under more specific themes. This helps to keep the overall project cost under control even when very broadly encompassing patent keyword search efforts bring in a large amount of irrelevant patent records.
All companies must decide whether to use in-house tools, in-house legal counsel, an external legal firm or a combination of these. There is no universal answer. Some companies prefer R&D teams to personally use patent search and analysis tools as their in-depth knowledge of the technology allows them to search for the most relevant results. It can be time consuming – and frustrating – for inventors to have to ping pong between R&D and legal departments for each and every FTO search. Other companies have specialized legal counsel who work with inventors during early stages of development. This is a great way to conduct FTO searches as when legal teams are involved during the early stages, they can give more insight on how to protect technology effectively. Some companies prefer to outsource all their patent searches to patent law firms with expertise in regularly conducting searches and send reports on new patents in a technology area. Using a combination of these can become very costly.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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