Is there a more strategic way of doing FTO Analysis?
The ultimate goal of the FTO searches is to make sure that your product does not fall into the trap of litigations, in other words, to assess the freedom to use your product without the fear of infringement.
But, if we consider the present day situation, we will find ourselves in a ditch of litigations even after performing an FTO study beforehand. This is because we are so used to of performing one time FTO search even when the product development cycle is very long. As the product takes a long time to mature, you might entertain an evolution into your product leading to many changes in the original product features.
So, why don’t we consider the possibility of performing recurring (frequently occurring) FTO studies? That is, during a product development cycle, why don’t we perform FTO searches at multiple stages to ensure that the product gets released without any hassle.
Now, there are a sizeable number of companies which follow this approach as well. But, the biggest roadblock with this is that most times we end up analyzing a considerable number of patents over and again.
Let’s understand this with the help of an example:
Say company X is trying to launch a new feature which unlocks its phone by matching the palm prints while holding the phone in hand. As over the product development cycle, there happen to be some minor alterations in this feature that phone need to be held from a specific greyed area on both the back bezels of the phone to unlock it.
In such a case, one time FTO search wouldn’t suffice because of the alterations in the desired feature. Also in recurring FTO, since the modifications are very slight, some patients similar to the previous feature may pop up during their search. The problem here is that they have to analyze all those patents again!! This is because they don’t know whether the new feature has a mention in the patent body or not. Therefore the only option they are left with is:
- They consider it a fresh study and analyze all the patents they find – If they go with this approach, it may take a toll on their time, resources and most importantly on their pockets. They may end up spending way more than what was envisioned.
But, this doesn’t seem like an ideal move in such a situation. Is there any way we can smoothen or streamline this? You ask.
Freedom to Operate is a very intricate subject matter and no IP counsel/attorney would ever want their product to be found liable for willful infringement. It’s unthinkable to be found answerable for such an offense when they did every bit they could to prevent it and be on the safer side. It’s indigestible, isn’t it? This is because by the time you could set up a system to track back your mistake, $5 million judgment becomes $15 million. Moreover, the federal court has ruled a decision that can add to their troubles over here:
United States Supreme Court in June 2016, passed a judgment on Halo Electronics, Inc. v. Pulse Electronics, Inc., in which it discarded the Federal Circuit’s Seagate test for finding willful infringement and awarding enhanced damages in patent cases.
The court found that Pulse (accused infringer) have done a reasonable investigation at their end. Therefore they could not be held guilty of willful infringement. According to leading IP Law firm Finnegan –
“Post Halo, an accused infringer cannot solely rely on the presence of objectively reasonable defenses in the litigation to defeat a patent owner’s willful infringement claim. If the patent owner can show that the accused infringer had knowledge at the time of the challenged conduct, the court can still find willful infringement even if the infringer’s defenses at trial are objectively reasonable. Even more potentially problematic for defendants, the willfulness decision will probably now be made by juries, who have little experience with patent cases when compared to most judges.”
Therefore, it’s high time to change the way we conduct these FTO searches and brainstorm upon – how can we use technology to make this better?
After Halo decision, it has become even more important to have an effective system which could index the incoming information and make it searchable. A system which could make a log of progress made in the analysis. Such a system can be a boon for IP attorneys to well manage the FTO searches and avoid infringements.
The $1000 question here would be – Do we have any such platform/system that offers all such specifications?
Yes, we do!
We have Slate, a customizable platform where IP team can tag their patents to some specific technology categories of interest and then zoom into 5-10 most relevant patents out of 100s of similar patents. It’s a platform where you can manage and review the changes/progress in real time and make a log of them. Doing an FTO or recurring FTO on you own using in-house team is found.
But, how can it be used to smoothen the process of FTO analysis?
Suppose you want to perform an FTO analysis and as your product features are evolving and you want to be sure that you are not infringing upon some patent(s). You ran a search and extract a patent set using different search strings. Once extracted, you can classify them into various technology tags based on the technology area they fall under. Tag the patents with the associated technology categories inside the Slate’s interface. This way all the information will be cataloged inside the slate and therefore could be easily accessed.
Now, you can use include & exclude filter inside the slate to reach the most relevant patent associated with the tag your product feature falls under. For example;
You want to check whether you have some patents on your list that falls under –
“Modulation technique and further under a sub tag – Amplitude Modulation but not under – Frequency Modulation.
In include filter, you can search for Modulation technique, Amplitude Modulation. This will provide you with the patents that have been tagged under the searched technology categories but some of them might also have a subtag as Frequency Modulation. In order to exclude the patents tagged under Frequency Modulation, you can use exclude filter in the slate penetrate to the most relevant patents. You can drill as deep as you want to depend upon the depth of tagging you are searching with.”
This is a case with one time FTO analysis but, how can it save time, money and resources employed in recurring FTO study?
In the aforementioned FTO analysis, you have already tagged all the patents to their respective technology categories inside the slate. You can simply use include/exclude filters of the slate to check whether the included patents fall under the tags associated with the modified feature set or not. Also, you can run alternate search strings to capture the patents that might be missed in first FTO analysis because of the alterations in the new feature set. You can analyze and tag all those patents inside the Slate to make them logged and structured for future purposes.
The moral of the story is that Slate doesn’t only saves resources & money but also time spent in conducting recurring FTO studies. It also makes the analysis easier as with a few clicks of buttons you can easily find out whether or not there are any patents associated with the envisioned feature set of your product. It makes a log of activities and makes it easier for the IP attorneys or team working on the analysis to track the changes and progress made. Moreover, it could be a blessing in disguise for the IP attorneys in the infringement lawsuits to prove unwillingness.