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.

How Does an FTO Analysis Work? – The 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.

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.

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