Lawyer Monthly - September 2023

ROI in Establishing a Robust Freedom to Operate Program The costs associated with patent litigation can prove ruinous for many organisations – and even the threat alone can create uncertainty that stymies business and restricts creativity. Taking steps to address and avoid the risk of patent litigation is thus key to many companies’ success, and obtaining a ‘freedom to operate’ opinion can be crucial for this. Intellectual property counsellor Keith Gilman speaks with us in this article, outlining the importance of freedom to operate investigations and what return on investment can be expected by companies that choose to pursue them. Expert Insight EXPERT INSIGHT 55 Most businesses familiar with the cost and disruption of a patent litigation – often costing millions of dollars each year for several years and uncertainty in the outcome – take steps to avoid or at least properly prepare for patent litigation as they develop new products or processes. The avoidance of patent litigation keeps employees focused on serving customers and developing new generations of products rather than allowing the interruption of litigation to sidetrack them into supporting a multiyear battle towards trial and appeal. The extent to which businesses take steps to avoid or minimise litigation often dictates their success. A patent right is granted by the federal government in exchange for a disclosure of an invention that meets many requirements. It is a measured grant of rights because the right is limited in time and extends only to that aspect of an invention that reaches a certain level of inventiveness beyond the ‘prior art’ – prior art being anything that existed or was described publicly before the invention. Moreover, the granted right is a right to exclude others from making, using or selling the invention as defined in the patent. This ‘negative right’ leaves room for others to patent improvements. This fulfills the

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