Freedom to operate
You have filed a patent or plan to file a patent to protect your invention. You should know that, even if you hold a patent or another intellectual property right, you may not necessarily have the right to use it. In this case, a freedom to operate study carried out by a specialized firm such as Brandon IP is useful and makes it possible to minimize the risk.
Intellectual property rights and exploitation rights
Indeed, a patent, design or a trademark gives its holder a monopoly over its exploitation (for a maximum duration of 20 years for patents, 25 years for a design, indefinitely for a trademark) in all the countries selected at the time of filing. Once the creation secured, the applicant has the right to prohibit its use by a third party, which means that in case of manufacturing or marketing of a patented product by an unauthorized company, it may be accused of counterfeiting.
However, and this is a fundamental point, intellectual property rights are not use rights. So, you can completely protect your inventions by obtaining rights, but not be able to exploit them. This is the case for example if a competing company holds a similar or complementary right which prevents the use of your technology.
What is a freedom to operate study used for?
In which cases may the intellectual property attorney recommend a freedom to operate?
A freedom to operate can be carried out on its own, independently of a patentability study or a prior art search, because you have identified a potentially overlapping prior or parallel right which would place you in an infringement situation. It can also be carried out consecutively and in addition to a patentability study or a search for prior art, as is often the case.
This is a study in which we will examine the validity and scope of potentially blocking intellectual property rights held by third parties. These patents may have been detected by you or by us, for example during prior art search processes.
In short, the freedom to operate allows you to know precisely the scope of protection of patents and other competing rights, to be sure of what you have the right to do and market or not, and thus avoid any infringement litigation.
The Brandon IP method
To carry out these freedom to operate studies, we use our databases of patents and scientific, legal and economic literature as well as press articles, accessible on commercial servers, the Internet, etc.
Our Intellectual Property attorneys also use their knowledge and experience of the practice of the different IP Offices, the law and case law in order to assess these various criteria in the technical areas within their competence.
Our conclusions are then reported. The purpose of the final report is to provide you with all the necessary elements for strategic decision-making with regard to the detected intellectual property rights of third parties that may block your activity.
Each study is the subject of a discussion with you to debrief on the counterfeit risk assessment and to consider bypass routes in case of difficulty. This discussion may for example result in a new invention project or in the decision to try to negotiate a license to use the third party’s patent.
Contact us to learn more about our services dedicated to patents and freedom to operate. Our intellectual property attorneys are available to answer all your questions and provide you with the best possible support for your project.
For more than 155 years, Brandon IP, Intellectual Property attorneys, has been specialized in protecting and defending your inventions and intellectual property rights. In partnership with Brandon Valorisation, innovation consultants, we support you in all stages of your innovation project, from its initiation and the implementation of your strategy, to the valuation of your intellectual property rights.
- Drafting, filing and defending a patent
- Defense of your intellectual property rights
- Patent prior art search
- Infringement lawsuit
- Patent oppositions