The technology space is filled day by day. Whether it’s a simple toy or a small car component or a high-tech product like a spare part for a satellite launch vehicle, each product is an amalgamation of diverse ideas and functional concepts that are protected by a host of patents. , utility models and design records. For example, even a simple product like the Gillett Mach 3 razor is protected by more than 40 different patents that protect each and every engineering feature of the Mach 3.
In such a scenario, even before one starts designing and developing a new product, one must first have a very clear idea about the proprietary technology in and around the product to be developed. The term ‘proprietary technology’ refers to product features that have been protected by various intellectual property tools such as patents (functional features) or designs (aesthetic features).
Search for “Freedom to Operate”:
There is a huge risk if you launch a product without any freedom to operate the analysis and search. In such a case, the newly launched product is quite vulnerable to infringement lawsuits that can threaten the business of the company itself. At this stage, the cost associated with IPR litigation, and the uncertainty involved, is often fatal and can force the company out of business altogether. A very famous case study that is often cited to emphasize the importance of complete freedom to operate search is Polaroid Vs Kodak. Kodak was a pioneer in the photography segment in the USA. Polaroid made a late entry to the market and developed its own technology for ‘instant photography’. Finally, Kodak also decided to enter the segment of instant photography. A week after the launch of the Kodak product, Polaroid filed infringement lawsuits against Kodak for infringement. The courts held that Kodak infringed Polaroid’s patents. Kodak had to pay $900 million. This forced Kodak to withdraw from the instant photography business altogether.
Therefore, the best way is to carry out a thorough search and analysis of the freedom to operate, even before starting to invest in the creation of plants for the manufacture of the proposed product.
A ‘freedom to operate’ search and analysis has exactly the purpose of understanding the ‘degrees of freedom’ that are available to the product development team while designing and bringing a new product to market. The ultimate goal of a product development team is to produce a product that does not infringe a patent or registered design.
A “freedom to operate” analysis is nothing more than a type of due diligence that must be carried out very carefully and seriously before undertaking any manufacturing activity. The freedom to operate analysis provides the details on the basis of which it can be determined whether the proposed or existing product can be manufactured, used, offered for sale, or sold without infringing on another valid and enforceable patent.
The result of a typical comprehensive analysis of the freedom to operate assumes strategic importance when making the following vital decisions:
Selection of a product for manufacturing.
From a search for freedom to operate, the feasibility of launching a product on the market with an optimized infringement threat is understood.
Selection of a manufacturing process.
Although the product is not new, one can make it by a new process, in such cases, the freedom to operate analysis determines whether or not the proposed process is non-infringing. If it is infringing, it also provides the details of the players with whom licensing arrangements will need to be made.
Equipment selection and plant layout and workflow
The freedom to operate analysis provides insights on how to design around existing proprietary technology by consciously choosing non-offending variables in the overall process flow.
Selection of packaging, labels and other details
The packaging and labeling of the proposed products enters the scene at a very late stage. The pursuit of freedom to operate provides many ideas for avoiding the possibility of infringement of other forms of intellectual property, especially copyrights and trademarks.
Market selection (by country)
Patents are territorial in nature and therefore an act that constitutes an infringement in India cannot be infringed in another country where there is no valid and enforceable patent related to the product or process in question.
Selection of technology partners, strategic alliances and cross-licensing partners.
In a typical complex business situation, it is rare to find a process or product that does not violate anything. In such cases, product development becomes a collaborative effort. The analysis of the freedom to operate gives a general idea about the various players in a given product segment with their specialties. Therefore, strategic decisions regarding licensing, cross-licensing, and forming strategic alliances with the other players can be made based on the results of the search for freedom to operate.
Carrying out a Freedom to Operate Analysis has become imperative in current times. The freedom to operate analysis should come from an independent patent attorney from outside the organization. This ensures an unbiased and objective analysis. In addition, the freedom to operate the opinion of a professional patent attorney is also considered in the court of law during infringement proceedings. Therefore, an attorney’s opinion of ‘freedom to operate’ may be used as a defense against charges of infringement of will.
