Freedom to Operate Searching – Avoiding an Amateur’s Mistake
IP.com R&A Tips No. 1
In this litigious era of patent trolls and fierce competition over technology, effective prior art searching has become a necessity. This is particularly true when conducting Freedom-To-Operate (FTO) searches. FTO searches focus on determining whether an inventive concept might infringe on a patent. The focal point of FTO searches is typically on the language of the patent claims, because it is the claims language that matters most when assessing infringement risk.
Inexperienced patent analysts often make the critical mistake of directing their search queries only towards the claims language. For strategic reasons, claims language is often very broad and lacking in key technical terms. Because the terminology associated with any given technology provides the searcher with necessary “hooks” into the relevant prior art, queries directed only at the claims will most certainly miss a lot of relevant prior art.
As such, a more successful outcome is achieved by broadening the scope of the search strategy beyond the patent claims. It is a good practice to first generate an exhaustive set of synonyms for the technology at hand, and then to build search queries based on those terms. When conducting FTO searches, it is advisable to avoid overuse of restrictive proximity operators when constructing your queries. These operators can be very restrictive and are typically reserved for patentability and invalidity searches. Once your queries have been prepared they should be directed at the full-text of the patent databases being searched!
This approach will often produce a daunting number of results; however that first set of results can be quickly reduced by employing patent classifications in the strategy as filters. The goal of the first pass is to reduce the results to a manageable number for analysis. The results for the first pass FTO search can be further paired down very rapidly by review of abstracts and titles alone. Once you get to a reasonable number (typically under 100) you can start reading and evaluating the claims language against the product/technology features at issue.
By way of example, the following claim language is very broad, and although it is directed to a video streaming system, it does not contain the terms “video” or “streaming.” However, if you were performing a freedom to operate search for any video streaming product going to market you would certainly want to know about this patent! Further, it would be very unlikely that you would uncover the patent containing this claim unless your queries were pointed at the specification sections. Note the term “means”… this is where all the hooks are missing.
The means are the how it’s being done part and you can only find that description in the specification.
Claim 1:
A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:
library means for storing items containing information; identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information; conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data; ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks; compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks; compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations.
The key point here is when conducting a Freedom-To-Operate search, never direct your search only to the patent claims. Build a strategy using appropriate technological synonyms, search the full-text, utilize the tools at hand to pare down the results, then read!..read!..read!.. the claims!
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Tagged freedom to operate, FTO, invalidity searches, patent claims, patent searching, patentability, R&A Tips, Research and Analytics
Tim KinganApril 17, 2012 at 10:52 am
Mark, yes, your point about searching broadly and narrowing with use of technology class (and subclass) is important. However, when searching non-patent literature, proximity operators would be very useful, since keywords often need to be seen in their context in order to manage a workload. Scirus goes part way there by displaying snippets of text which may display more than one of provided keywords. However, for those tools I know of (Google Scholar, Scirus and now ip.com), proximity operators seem not to be available.