Clearing a Product for Launch: How to Conduct a Freedom to Operate Analysis

42 questions on clearing a product for launch, answered and cited by the UpLaw editorial team.

• Are patent injunctions automatic once infringement is found?
• Can a company be liable when its customers or users perform the patented steps?
• Can shipping components or software abroad infringe a U.S. patent?
• Does an FTO analysis have to be run separately for each country?
• Does a product launch need trademark clearance as well as patent clearance?
• Does owning your own patents protect you from infringing someone else's?
• Do expired patents and pending applications matter to an FTO analysis?
• Do you legally have to obtain an opinion of counsel before launching a product?
• How can licensing or patent exhaustion create freedom to operate?
• How does an FTO search differ from a validity or prior-art search?
• How do you confirm a patent is still in force, and what can move its expiration date?
• How do you triage hundreds of patent search hits down to a workable list?
• How is freedom to operate different from patentability?
• How often should a freedom-to-operate analysis be updated?
• How precisely do you have to define a product before running an FTO search?
• How should FTO risk be graded and communicated to business decision-makers?
• Should you get a non-infringement opinion or an invalidity opinion?
• What are anticipation and obviousness, and how are they used in an FTO analysis?
• What are the Section 112 and Section 101 attacks on a patent's validity?
• What are the two layers of an FTO workflow?
• What can happen to a company that launches a product infringing someone else's patent?
• What doctrines limit the doctrine of equivalents?
• What is a claim chart, and why is it central to FTO?
• What is a design-around, and how substantial does the change have to be?
• What is a freedom-to-operate analysis?
• What is claim construction, and how do courts do it?
• What is divided infringement, and why does it matter for method claims?
• What is prosecution history estoppel, and why does it matter to an FTO analysis?
• What is the all-elements rule, and what is literal infringement?
• What is the doctrine of equivalents?
• What makes an opinion of counsel good — or worse than useless?
• What makes patent infringement willful, and how did Halo change the analysis?
• What narrowing claim constructions should FTO counsel look for?
• What privilege risk comes with relying on an opinion of counsel?
• What special problem do standard-essential patents create for freedom to operate?
• When does a claim element get treated as means-plus-function under § 112(f)?
• When is a proactive inter partes review worth filing?
• Where and how do you search for patents in an FTO study?
• Why do a patent's claims control the infringement analysis rather than its title or abstract?
• Why does an FTO analysis evaluate validity, and what burden of proof applies?
• Why does “comprising” versus “consisting of” matter so much in a patent claim?
• Why do patent-assertion entities require a different risk calculus?