In the complex world of intellectual property, two types of study play a crucial role for innovators: thepatentability study and thefreedom-to-operate study. These studies are complementary when it comes to protecting and marketing your innovation. Understanding these differences is essential to making informed decisions about protecting and exploiting a new innovation.
What is a patentability study?
A patentability study is a preliminary examination carried out by an Industrial Property Attorney to determine whether an invention meets patentability criteria such as novelty and inventive step. It takes place in 2 stages:
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- Prior art searches on public and private databases. This worldwide search identifies any relevant document close to your invention, whatever its source: published patent documents, press articles, scientific articles, blogs, e-commerce sites… ;
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- Analysis of the documents identified in their entirety in relation to your invention and dispatch of a report containing the conclusions of the study, including a strategic opinion from the Industrial Property Attorney as to the continuation of the project and the chances of obtaining a patent.
This study is used to determine whether or not to file a patent application, and to assess the chances of granting a patent. It is also conceivable that a patentability study could identify a strategy other than filing a patent application, such as keeping the innovation secret.
The patentability study can be carried out before a patent application is filed, or during the examination phase. If a patent application has already been filed, it is preferable to carry out this study before publication (18 months after filing), so as to be able to withdraw it if necessary before the text becomes accessible to all on patent databases.
What is a freedom to operate study?
The Freedom to Operate (FTO) study has a different objective.
This is an in-depth examination of a specific territory to determine whether an invention can be exploited without infringing prior patent rights held by competitors, who could accuse you of counterfeiting. This study is also carried out in 2 stages:
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- Prior art searches on patent databases to identify patents in force and pending patent applications relevant to your invention, in territories of interest;
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- Analysis of current patent claims and patent applications under examination, to determine whether your innovation is covered by them, and submission of a report containing the conclusions of the study, including a strategic opinion from the Industrial Property Attorney as to the freedom to exploit your invention and the future actions to be taken as a result (exploitation, licensing, etc.);
This study is crucial to avoid potential litigation linked to the infringement of existing patents when implementing new technologies or products, and also enables you to identify potential partners with whom you can enter into negotiations to obtain or issue licenses.
In conclusion, the patentability study assesses whether an invention can be protected by a patent, while the freedom-to-operate study assesses whether the invention can be exploited without infringing existing patents.
Both analyses play an essential role in the decision-making process for innovators and companies, helping them to navigate the complex IP landscape while protecting their rights and avoiding costly litigation.
