*Chinese Translations Coming Soon*
You should look for possible IP barriers that may limit your ability to market a product or service:
· As soon as you begin considering or developing a new product of service and
· Whenever a product or service is relatively well defined and commercially attractive.
Such studies help determine your freedom to market the product or service in question and are often referred to as Freedom To Operate (FTO) Studies. The depth of an FTO study may vary as discussed below. As the discussion below also indicates, the inter-relationship between FTO studies and a product development cycle should be a part of the strategic planning for the introduction of that product (see,
TusPark Articles). In the U.S., recent studies by the Intellectual Property Owners Association indicate that over half of the surveyed corporations undertake such studies in connection with the introduction of all or almost all new products.
As background for an FTO study, you may examine competitive products and literature for indications of IP protection. You may also initiate patent and literature searches in public databases. Search agencies may be used to ensure optimum coverage.
Legal counsel may be engaged to ensure legally correct assessment of the IP risks. Before engaging legal counsel, you should consider the experience of the counsel to be engaged. If the U.S. is all or part of the target market, experience in advising and representing clients regarding U.S. law and in U.S. courts is critical.
The time and money invested in an FTO study should be proportional to the degree to which plans for the product or service is finalized, the prospective investment necessary to commercialize the product or service, the commercial opportunity at risk and the extent of known IP activity in the market for the product or service.
RatnerPrestia encourages clients to assess their legal position with respect to possible IP barriers early and often. But we control the cost of our engagement for an FTO study by project management of any study to be undertaken, and by project planning so that the depth of our study and the formality of our advice will as consistent as possible with the client’s best business interest, taking into account the stage of development of the product or service and other circumstances, as discussed above.
