FTO - Freedom to Operate A Checklist
The development of innovative products is a major milestone – but before launching to market, a crucial question arises: Am I actually allowed to do this? This is precisely where the Freedom to Operate (FTO) analysis comes into play. It examines whether a product may infringe on existing intellectual property rights – and thus minimizes the risk of costly legal disputes or sales bans.
In this blog post, we’ll explain what FTO is all about, how to conduct an analysis systematically, and the role of patent claims and feature comparisons. A compact checklist completes the article.
What is an FTO Analysis?
"Freedom to Operate" literally means the freedom to act – in this case, within a market. An FTO analysis checks whether a new product, process, or device infringes on third-party IP rights, particularly patents. If a product is brought to market that uses all the features of a patent claim, it may constitute patent infringement – even if the company is unaware of the patent.
Understanding What Is Protected: Focus on Patent Claims
The core of every FTO analysis is the patent claims, as only they define the legal scope of protection of an invention. A distinction is made between:
· Independent claim: Contains the central technical teaching. Only what is listed here is legally protected.
· Dependent claim: Specifies or refines the independent claim. Without a valid independent claim, a dependent claim cannot stand on its own.
Why dependent claims matter: Independent claims are drafted as broadly as possible to obtain wide protection. But the broader the claim, the more likely prior art will conflict. Dependent claims allow targeted narrowing during examination without losing protection entirely.
Therefore, focusing on the independent claim is often sufficient. If any feature of the independent claim is not implemented in the product, then none of the dependent claims are infringed either, since they include all features of the independent claim.
Example:
· Claim 1 (independent): "Electric bicycle with an electric motor that assists pedaling."
· Claim 2 (dependent): "Bicycle according to claim 1, wherein the electric motor is a hub motor."
If an electric bicycle that assists pedaling is already known but does not use a hub motor, claim 2 may still lead to a patent if it is added to claim 1.
However: If one tries to invalidate a patent by filing a nullity action, it is possible for the patent owner to rescue the patent by incorporating features from a dependent claim into the independent claim. Therefore, if things get tight, one must assess whether such an amended independent claim would still pose a problem.
Claim Charts and Feature Analysis: Comparison Is Key
In an FTO analysis, it is checked whether the product implements all features of a patent claim. This is crucial, because:
Only if all features of a claim are found in the product, a potential patent infringement may exist.
Key points:
· The comparison is made from the patent claim to the product, not the other way around.
· If even one feature of the independent claim is missing from the product, no infringement occurs.
· However, additional features in the product not mentioned in the patent do not exclude infringement.
Features of the independent claim above:
1. Electric bicycle
2. The bicycle has an electric motor
3. The motor assists pedaling
If a product includes all three features, it falls within the scope of protection. If any feature of the independent claim is missing, there is no infringement. However, the assessment must be carried out for every potentially relevant patent and for all independent claims of a patent.
Beyond Literal Infringement: Why FTO Must Look at Equivalence and Functional Claim Language
Freedom-to-Operate (FTO) analyses are essential for companies that want to launch new products without facing legal risks from existing patents. At first glance, the task seems simple: read the claim, compare it with the product, and if the wording does not match, assume there is no infringement. But patent law rarely works that way. Courts and patent systems recognize that protection can extend beyond literal wording. Two concepts are especially important here: the Doctrine of Equivalents (DOE) and means-plus-function claims under U.S. law.
Literal Comparison: The Starting Point
The backbone of every FTO is the claim chart. In this tool, an independent claim is broken down into simple, clear features. Each feature is compared with the product. This is crucial because patent law applies the “all-elements rule”: infringement only occurs if the product includes every feature of the claim. If one feature is missing, there is no literal infringement.
This method gives structure and clarity. It helps engineers and legal teams align on whether a product directly matches the scope of a patent. But literal comparison is only the first step.
When Different Words Still Mean the Same Thing: The U.S. Doctrine of Equivalents
In the United States, a product can still infringe a patent even if it does not literally reproduce every feature. This is the Doctrine of Equivalents. The idea is straightforward: if a feature in the product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed feature, it may still fall within the patent’s scope.
Take a simple example. A patent claim requires “a screw” to fasten two parts. A company instead uses a “nail.” On paper, screw and nail are different. But since both fasten parts together in essentially the same way to achieve the same result, a court could still find infringement. For FTO, this means risks exist even when the wording looks different.
Means-Plus-Function Claims: Functional Language in U.S. Patents
Another wrinkle in U.S. patents is the means-plus-function claim. Instead of naming a specific structure, the claim might read: “means for fastening two elements.” At first, this sounds unlimited. But under §112(f) of U.S. patent law, such a claim only covers the structures actually disclosed in the patent specification and their known equivalents at the time of filing.
For an FTO analysis, this means you must dig into the patent description. If the patent discloses screws and bolts, the claim covers those and similar substitutes. If your product uses glue, the claim wording doesn’t match — and unless glue was recognized as a known alternative at the filing date, it may not be covered. These claims show why FTO must always connect claim language with the patent’s specification.
Europe’s Three-Question Test
In Europe, courts apply a three-question test to decide if something counts as an equivalent:
- Does the alternative achieve the same effect as the claimed feature?
- Would a skilled person, at the filing date, have recognized it as an obvious equivalent?
- Is it consistent with the claim wording, so that third parties are not misled?
This test is stricter than the U.S. approach because it emphasizes legal certainty for competitors. Returning to the screw-versus-nail example: a court might say the nail achieves the same effect and was obvious, but if the patentee deliberately wrote “screw,” stretching the claim to cover nails might create uncertainty. The European framework balances fairness for the patentee with clarity for the public.
Making Equivalence Practical in FTO
How can companies handle these doctrines in daily practice without creating legal admissions? One effective method is to expand claim charts with an additional column for comments. The task for engineers is not to judge infringement but simply to identify where product features do not match the wording of a claim feature.
If a mismatch is found, it is recorded clearly. If the wording of a claim feature appears to match, the engineer provides a neutral, factual description of how the relevant feature is implemented in the product. This ensures that the analysis captures all technical details while leaving the legal assessment of equivalence or infringement to the patent attorney.
Everyday Examples
A claim says “a fastening element in the form of a screw.” If the product uses a screw, the overlap is literal. If it uses a nail, the wording does not match — but under the doctrine of equivalents, it might still be risky.
Another case: a U.S. claim states “means for detecting motion.” The patent specification discloses infrared sensors. That claim covers those sensors and known alternatives like ultrasonic sensors at the time of filing. A product using ultrasonic sensors could therefore still be within scope. These examples show how different wording does not always mean freedom to operate.
Conclusion
An FTO analysis is more than a mechanical claim check. While literal feature comparison is essential, doctrines like the Doctrine of Equivalents and means-plus-function rules can extend the reach of patents. Ignoring them risks missing hidden infringement threats.
By combining clear claim charts with awareness of these broader interpretations, companies can create more reliable FTO assessments. The goal is not only to identify obvious risks but also to understand the gray zones, so management can make informed decisions about design changes, licenses, or market strategies.
Questions in an FTO Claim Feature Review
1. Literal Wording
o Does the product implement the feature exactly as worded in the claim?
2. Doctrine of Equivalents (DOE)
o Does the product feature perform essentially the same function, in the same way, to achieve the same result?
3. Means-Plus-Function (§112(f) US)
o Is the claimed “means” disclosed in the specification?
o Does the product use that structure or a known equivalent at the filing date?
4. Claim Category / Type
o Is the claim directed to a product, method, system, or composition?
o Could the product or its use infringe under that category?
5. Jurisdiction / Territorial Scope
o Is the patent in force in the country where the product is made, used, or sold?
6. Claim Construction Standards
o How might courts interpret the feature (narrow vs. broad)?
o Any differences between patent office and court interpretation?
7. Prosecution History (File Wrapper)
o Were any claim limitations added or clarified during examination that restrict scope?
8. Priority Date & Known Alternatives
o At the filing date, would known alternatives have been seen as equivalents?
o Are later-developed solutions outside the scope?
9. Patent Validity Context (Optional for Risk View)
o Was the invention already disclosed in prior art at the filing date?
o Could that weaken enforceability of the claim?
10. Industry Standards / SEPs
o Does the feature overlap with standardized technology?
o If yes, higher likelihood of essential patent risk.
How Does an FTO Analysis Work? – A Checklist
1. Define the Subject of the Analysis
· Define the focus: What is being assessed – a product, a process, or a device?
· Provide a technical description of the subject matter or have an sample.
Goal: Define the scope of the analysis for targeted searching. A precise definition (e.g., technical features or components) helps avoid reviewing irrelevant patents. Vague definitions lead to misinterpretation and wrong conclusions.
The introduction of a patent outlines the invention’s background. It helps determine the technical context and identify the problem solved. This helps assess whether a patent might be relevant.
2. Break Down the Product
· Decompose into components, segments, parts, or functions.
· Create a bullet-point list of technical features.
· Prioritize: Which features are new to the market?
This enables focusing on specific features during the initial review instead of comparing the entire product with the patent. A structured feature list allows systematic comparison: "Feature A of the patent exists in the product" vs. "Feature B is missing."
3. Patent Search
· Define your search strategy, for example:
o Select keywords and synonyms
o Use relevant IPC/CPC classes
o Search by applicant or competitor
· Combine several strategies for maximum coverage
· Use comprehensive patent databases:
o https://Espacenet.com
o https://depatisnet.dpma.de
o https://patents.google.com
4. Narrow Down to Relevant Patents
· Focus on patents with a filing date within the past 20 years.
· Filter by country and legal status (e.g., "active protection" via patcheck.de).
· Assign patents to a systematic e.g. product components for easier and faster assessment.
5. Feature Comparison
· Create a claim chart: Each feature of the independent claim must be clearly understandable (avoid nested clauses)
· Break down the independent claim into individual features
· If multiple independent claims exist, create separate claim charts for each
· Assessment: Are all features of the claim implemented in the product? Always view claim features vs. product features
6. Documentation
· Systematically record all search and analysis results.
· Prepare a clear FTO report including a risk analysis.
7. Legal Evaluation
· Involve a patent attorney if conflicts may arise.
· Conduct a risk assessment and identify legal options.
8. Possible Action Steps
· Conduct novelty searches
· Implement technical modifications (“design-around”)
· Enter license negotiations or explore alternative solutions
· Consider legal actions, such as testing patent validity
What If You Suspect All Patent Features Are Found in the Product?
In practice, many patents must be reviewed in a short timeframe. Sometimes, a claim appears to cover all features of the product. In such cases:
· Mark these patents for in-depth review.
· Use cautious language: "Needs further review", "Consider later", etc.
Premature statements like "This applies to our product" can be interpreted as admissions of infringement if legal disputes arise later – even if proven wrong afterward.
Such patents should be reviewed with a qualified expert. If concerns remain, place all further communications and documents under legal privilege with an attorney.
Conclusion: FTO Provides Legal Confidence
An FTO analysis is not a luxury – it is a necessary step on the path to market entry. It enables early identification and mitigation of legal risks. Through systematic procedures, structured research, and targeted feature comparisons, it provides a well-founded basis for decisions – whether for design changes, licensing strategies, or legal action.
If you want to enter the market with confidence: Start with a solid FTO analysis.