What is “Freedom to Operate”?
Generally speaking, Freedom to Operate refers to the ability to use or commercialise a product or process without infringing on another party’s valid Intellectual Property rights. While the term Freedom to Operate generally refers to Patents, it is wise to consider other types of IP rights before launching any product or brand.
Before you launch your product onto the market, we recommend you ensure it will be commercially safe to do so by checking for possible infringement of competitors’ Intellectual Property rights. It is important to remember that you being granted an IP right which covers your product does not protect you from infringing other people’s IP rights.
There are no official copyright registers in the U.K. or Ireland but other IP rights such as patents, registered designs and registered trade marks can be searched for in various databases.
In order infringe a granted patent, your actions would need to involve each and every feature listed in a granted patent claim. If your product or process has all of the listed features as well as one or more extra features, it would still result in infringement of a granted patent if performed in the country in which the patent is in force.
Whilst it is not possible to be sued for infringement prior to patent grant, after grant you could be sued back to any actions that take place after publication provided those actions fall within the scope of both the published and eventually granted claims. It is therefore also important to search for pending patent applications as well as granted patents.
In order to infringe a registered design, your product has to incorporate that design either exactly or in a way that does not produce a different overall impression on an informed user. Design FTO searches are more unusual than patent FTO searches as it is often a lot easier to change the appearance of a product to avoid design infringement than to redesign it to avoid patent infringement.
Trade Mark Infringement
In order to infringe a registered trade mark, a person must use a sign that is identical with or similar to a registered trade mark and the sign is used in connection with identical or similar goods or services, therefore creating the likelihood of confusion on the part of the public, which includes the likelihood of association.
To avoid this situation we would recommend that you conduct an availability search through the relevant trade mark databases to ascertain that the trade mark of interest to you is not the subject of an application or is registered.
We would not typically recommend performing freedom to operate searches, related to patents or designs, until your product is past the concept stage as otherwise we would need to cast a very broad net which may result in a vast amount of search results, many of which may not be relevant.
The cost of FTO searches vary depending on how intensive a search is required and in which jurisdictions.
Should you need assistance with this, or any aspect of IP, please contact us at firstname.lastname@example.org and we would be pleased to assist you.