Why is it highly recommended that an organisation obtain a freedom-to-operate opinion before launching a new product or service? A freedom-to-operate (FTO) opinion is a legal opinion provided by a patent attorney or lawyer based on an FTO search for issued patents related to a product or a service with the aim to assess any potential infringement of the patent rights of other parties. An FTO search typically also involves identifying pending patent applications which may give rise to a potential risk once issued. Companies of all sizes and areas of technology have, over the years, become more aware of the importance of protecting their inventions from being ‘copied’ or their patents being infringed by others, including their competitors. However, previously, the same level of vigilance was not always observed to prevent their products or services from breaching third parties’ intellectual property rights. This exposes the companies to potential risks of patent infringement disputes or litigation, which are well known to be expensive and time-consuming. We generally recommend our clients obtain an FTO opinion during the research and development stage of a new product or service or before launching the new product or service to the market, especially for products or services considered as being commercially important and also where they are competing closely with competitors. The FTO opinion may not only allow them to make more informed decisions during the development stage, such as by modifying their inventions to design around existing patents to avoid potential infringement risk, but also useful for the clients to identify potential key patents in the relevant field to minimise any patent-infringement risks or to take the appropriate action in advance to mitigate such risks. For example, the FTO opinion may help clients from having to withdraw or recall products or services from Securing Freedom-toOperate Opinions 54 LAWYER MONTHLY APRIL 2023 A staple of intellectual property law, freedom-tooperate opinions are often essential for many businesses to obtain prior to launching new products and services, allowing organisations to insulate themselves from potential infringement of other parties’ IP rights. In this feature, InCompass IP director Yannie Chan shares her insight on this process and its importance to many industries. Expert Insight
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