FTO opinions are often required by the pharmaceutical industry and the demand has remained high over the years. by our colleagues in the pharmaceutical industry due to the high costs in developing new drug products and the long period of time required for the R&D and clinical studies to be conducted prior to bringing new drugs into the market. Another sector is the telecommunications industry – also due to the high costs of product or service development and the high value of many such products and services. It is also common for some manufacturing companies such as power tool or electric motor manufacturers to obtain FTO opinions as, for these products, the variations from one product to another could be small but significant enough to give rise to expensive infringement risks. Do you have any advice for less experienced patent attorneys on providing FTO opinions? FTO analysis involves the formulation of search strategies and the interpretation of patent claims which are complex tasks. It can be useful to seek a second opinion from an experienced patent attorney colleague when conducting the FTO analysis, especially when the claims of the potential conflicting patents are not direct or clear. It is also imperative to obtain sufficiently detailed information from the client about the subject matter that the opinion is based on to facilitate a thorough analysis. EXPERT INSIGHT 57 About Yannie Chan Yannie Chan is a professionally qualified Patent Attorney in Australia and New Zealand, and a registered Trade Mark Attorney in Australia and director and partner at InCompass IP Limited. She is experienced in drafting, filing and prosecuting patent applications in various major jurisdictions, and has provided numerous patent infringement, freedom to operate, and validity opinions for clients. She is also recognised by leading IP publications such as the IP Lawyers as the recommended IP practitioner in Hong Kong for 2023. About InCompass IP Limited InCompass IP Limited comprises a team of Hong Kong- and London-based attorneys who provide international IP services to clients locally and worldwide. The firm’s services include filing and prosecuting patents, trade mark applications, drafting of patent specifications, trade mark searches, patentability and infringement searches and opinions. The InCompass IP team is experienced in securing IP rights for clients across a broad range of industries. Contact Yannie Chan Director, InCompass IP Limited Unit 205, 2/F, Building 19W, 19 Science Park West Avenue, Hong Kong Science Park, Pak Shek Kok, New Territories, HK Tel: +852 2607 4308 | +852 2607 4272 Fax: +852 2607 4457 | +852 2607 4282 E: Yannie.Chan@inCompassIP.com www.inCompassIP.com
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