Patentability & FTO Opinions
For many inventions, a patentability & freedom to operate ("FTO") search is a prudent early step in the development of an invention. This search is not required but we often recommend them to manage the following risks:
To reduce the risk of incurring the expense of a patent application for an unpatentable invention;
To evaluate the likely scope of allowable claims and enable the client to evaluate the commercial value of such protection;
To identify any potential patent infringement concerns early in the development process, which enables the client to evaluate whether to proceed and provides an opportunity for design-arounds.
To provide background information on the state of the art, which helps us draft the patent application in a more focused and efficient matter.
Under U.S. patent law, an invention is patentable only if the claimed subject matter is "novel" and "non-obvious" in view of the "prior art." Prior art is all inventions that, before the filing date of the client's patent application, were (1) patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the filing date of the client's patent application or (2) described in an issued patent or a published patent application having a filing date that is prior to the filing date of the client's patent application. In order for an invention to be novel, it must not be fully disclosed by a single prior art reference. In order for an invention to be non-obvious, it must not be suggested, to a person of ordinary skill in the area of technology of the invention, by combining the disclosures of multiple prior art references.
No search, no matter how comprehensive, can guarantee patentability or FTO. Due to the sheer number of documents that would need to be reviewed, a fully comprehensive search would be cost-prohibitive. Other factors may lead to relevant references being overlooked, including inaccuracies in machine translations of foreign language documents and the unavailability of pending, unpublished patent applications. In addition, the subjective nature of novelty and non-obviousness may result in one searcher (or an Examiner) citing a reference that another did not find or deem relevant. It is not unusual, therefore, for an Examiner to cite a reference during prosecution of a patent application that was not identified by a typical preliminary search. We attempt to strike a reasonable balance in our searches between cost and the risk of overlooking a relevant reference.
The scope of such a preliminary search, although not exhaustive, is intended to be similar to that ordinarily conducted by a USPTO Examiner in the course of examining a U.S. utility patent application. Our searches are conducted by a person who is familiar with the U.S. patentability requirements and the USPTO patent classification system. Our searches generally include classification-based searching, keyword searching, and forward and backward citation searching from relevant references. Databases searched include the patent collections of the patent offices of most industrialized nations.
It is important to note that the FTO portion of a preliminary patentability & FTO opinion is intended to identify potential infringement risks. It is not intended to be a comprehensive non-infringement opinion. If we have a substantial infringement concern, we will recommend a more comprehensive infringement analysis.
Finally, it is important to note that our searches are only as good as the invention-related information that were are provided by the client. Accordingly, please take the time to ensure that your disclosure is as complete as possible.