Perform part of a Freedom to Operate (FTO) Analysis
Freedom to Operate (FTO) is an analysis to determine whether a product, technology or invention may infringe on someone else’s patent claims. The goal of an FTO is to give the client (inventor or company) a list of patents upon which their product or technology could be infringing.
Anatomy of a Patent
A patent is a legal right granted by a sovereign state to an inventor to exclude others from commercially making, using, and selling the invention without permission for a limited period of time. At the core of a patent are claims that define the limits of exactly what the patent protects and does not protect. Claims may be construed to cover some actions, but not others. Reading and understanding the claims of a patent is crucial to determining if a disclosed invention is challenged by an existing patent.
Overview of the FTO Process
A simple illustration of an FTO analysis
Say your client invents the pencil and wants to sell it. You know of a patent that claims a “graphite rod for writing”, and describes (in the body of the application) methods for protecting the graphite from getting on your hands by wrapping the graphite in paper or cloth, but not with wood.
In an FTO analysis, you would have a problem, because the pencil is also a “graphite rod for writing” even though it contains other components, so the pencil would infringe on the previously existing claim. (On the other hand, if the claim was for a graphite rod wrapped in cloth, there would be no FTO problem, because a pencil contains no cloth.)
Perform the patent review (Step 4) of an FTO, and determine patents to discard or keep as potential IP issues based on the claims. Examine the specifications in the claims based on the terms you want to protect, and look for patents that might conflict.
For this exercise, you are a patent agent and your client is a company who discovered a novel protein.
Task 1: Patent Review
Read the description of the invention. Next, review the claims sections from eight patent applications and identify the patents to discard or keep as a potential problem. Note that we have abbreviated the claims section for the purpose of this exercise. These patents were chosen based on the following search words: wound healing, regeneration, skin, neurons, target, drug target, microtubules, severing enzymes, Becaplermin, siRNA, and cytoskeleton.
Use the following criteria to evaluate each patent’s claim and compare it to the invention descriptions to determine if the new invention might infringe on existing claims:
Task 2: Summarize IP Challenges
Take the patents you identified as challenges and briefly summarize the specific barriers.
Organize the information by creating a table (see example below). Use the table to keep track of each challenge. For example, if Patent 1 has two claims that could pose a challenge in the drug delivery category, give it a score of 2 in the drug delivery row.
Note: Metrics for evaluation may vary between companies. Feel free to define your own metrics.
Task 3: Create a Presentation
Create a presentation slide for one of the patents you identified in Task 2 that you might present to the scientists in the company and your firm’s leadership. Describe their threat level, and your rationale for why it presents an IP challenge. Determine the threat level by using the scoring system below.
One standard deliverable for an FTO project is a presentation. A short (5-10 slide) presentation should allow the people you are working with to clearly see the top patents the product or technology may infringe upon. Your team will then present this to the client and advise the client on next steps.
The client may choose to design around the conflicts or license part of technology. For this job simulation exercise, you are looking for challenges to file the patent as is, and not designing solutions or work-arounds.
Sample Deliverable #1
Sample Deliverable #2
Task 1 sample: Evaluation of the claims in the invention and the patents. Note: only the claims relevant to the invention are listed below
General resources to get you started:
- Evaluating Your Freedom to Operate (World Intellectual Property Organization)
- Links for patent databases
- Patent it yourself, slides by David Pressman – introduction to intellectual property and practical guidance
- How to read a patent by Way Better Patents
- Invention Disclosures and the Role of Inventors, chapter from ipHandbook of Best Practices
Skills used to perform this task:
- Market research
- Technical writing
- Reading comprehension
Skills needed in legal careers:
- Technical expertise (STEM field)
- Legal compliance
- Project management
- Collaborating with clients
- Dealing with conflict
To view detailed lists of skills in job descriptions for policy careers, please see workforce data generated by Boston University’s BEST program.
To view skills listed by professionals on LinkedIn, check out this resource created by Duke University.
A professional in the field of intellectual property may also perform these activities:
- Patentability searches
- Perform due diligence
- Write claims
- Interview scientists about their technologies
Read more about careers in intellectual property and patent law in this resource generated by Duke University Career Center.
You are viewing a job simulation. To get started, set up SMART Goals to perform this simulation in a reasonable timeline. If you have completed the task, fill out the Self-Reflection Sheet.
Simulation authors: Rabab Charafeddine, PhD and Thi Nguyen, PhD
Simulation vetted by professionals from law firms in the Bay Area and in DC