The Gatherer Volume 6

To help you decide what to do, there are a number of questions you should ask yourself – such as: –– How similar to the project is the patent? What is the infringement risk? –– How existential is the threat? Does it go to the core of the project, or can steps be taken later on to work around it? –– How flexible or unpredictable is the project? Could the issues resolve themselves as the project proceeds organically? –– Can the project easily steer clear of the patent, even if it’s legally unnecessary? This might be cheaper than taking other action. –– How strong is the patent? Are there any invalidity issues? –– Who owns the patent? What’s your relationship and experience with them? What’s their business model? –– What is your potential market worth?

FREEDOM TO OPERATE SEARCHES

A strong knowledge base can give you a real edge over the competition, but are you taking advantage of all the available information streams? Freedom to operate searches are an extremely useful, yet chronically underutilised, tool for gathering information. FTOs are like reconnaissance missions, allowing you to scope the field of development and your competitors. Used effectively, they provide guidance on where to direct your R&D work – and can help you anticipate and avoid problems well in advance. A small investment in an FTO at the beginning of a project can make an enormous improvement to the return you see on your R&D budget. Freedom to operate searches An FTO is a literature search of published patents and applications, and is conducted using keywords. You can search broadly for inventions within a field of technology or that do a certain thing, or narrowly for inventions that function a particular way. You can also search for Australian patents, patents in selected countries or worldwide. Conducting an FTO is an excellent way to identify development opportunities that your business can target. An FTO will identify any published patents and applications for inventions matching your keywords. These results will give you a good picture of the patent landscape. You may find gaps in that landscape – needs that the existing patents don’t adequately address

or new ways of providing existing services that will best the competition. These gaps represent development opportunities that you might be able to exploit. You may find fledgling ideas in patents that you can build upon. You might find patents you can purchase and commercialise, or use as a base for further R&D work. Sometimes inventions are protected in some, but not all, countries. Let’s say an invention is protected in Europe, but not in Australia. You’re free to commercialise that invention in Australia. If the Australian market is negligible, you could conduct in Australia all the development work needed to bring the invention to market, including real world trials, so you can launch a perfected product in Europe as soon as those patent rights expire, getting a jump on the competition. FTOs provide an insight into what competitors are working on. This can provide you with helpful intel on their upcoming products and allow you to anticipate, and make early moves to combat, their latest innovations. Finally, FTOs allow you to anticipate and avoid disputes by determining whether something is already protected. There’s more on what you can do if you identify a problematic patent in the next section. Ideally, FTOs should be conducted before beginning a project. From the outset, the FTO should be part of the matrix of information you draw upon to tailor your strategy. There’s nothing worse than spending valuable time and money developing an idea only to find out that it will be launched into a thicket of products and patents, and that you’ve missed a more promising area for investment.

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