IPR ABC | Preliminary novelty search and FTO analysis as a part of IPR strategy

Intellectual property rights are an important part of a company’s operational planning and activities, generating added value for the business. Creating this value requires that protection is directed at the right matters and at the right time in order to gain a competitive advantage and enable risk management. A preliminary novelty search and a FTO analysis are therefore important tools for managing a company’s intangible assets.

Is my invention patentable?

A patentable invention must be new and inventive in relation to the prior art, meaning publicly available information. This public information includes all types of public disclosures in addition to patent applications and granted patents, such as journal articles, trade fair brochures, and video recordings. As the name suggests, a preliminary novelty search is used to assess whether an invention is new. The search uses databases that include not only patent publications and applications but also scientific articles. In particular, analyzing granted patents and patent applications requires interpretation and understanding of text that is specific to the patent field. With the help of a professional, even non-obvious similarities can be identified in the search. In the analysis, the features of the invention are compared with the prior art, and to meet the novelty requirement it is sufficient that the invention contains at least one new technical feature. On the other hand, novelty may be prevented by features that appear implicitly in a reference publication—features that are not explicitly mentioned but can be inferred as part of the solution described in that reference.

What is determined in a preliminary novelty search?

A preliminary novelty search includes the analysis of public information that relates closely to the invention, highlighting differences and similarities and thereby indicating how these should be taken into account in product development in order to avoid problems related to intellectual property rights. Companies often know how their inventions differ from the products of their main competitors, but a novelty search helps identify possible obstacles to patenting. Therefore, the search should be directed at the right targets by identifying the core invention and its key features. If necessary, the novelty search can be expanded into a patentability search, in which inventiveness is assessed in addition to novelty. Inventiveness requires a significant difference compared to the prior art, using analytical models commonly applied in the field to determine inventive step. However, the assessment of inventiveness varies from country to country, making it more challenging to evaluate than novelty.

Does my product infringe someone else’s patent?

A FTO analysis is a search used to determine whether a product can be commercialized freely without infringing a granted patent or a pending patent application. While a preliminary novelty search compares the client’s invention to all publicly available information, an FTO analysis focuses on the actual product or method and potential product infringements. In an FTO analysis, the scope of protection defined by the patent claims of granted patents and pending patent applications is examined.

When should a FTO analysis be conducted?

It is advisable to assess freedom to operate before launching a product—preferably during product development. In particular, the analysis should ideally be conducted before the prototype stage so that the company can ensure that competitors do not have patents or pending applications that could hinder its activities. Conducting a FTO analysis can help avoid infringing others’ patents while also building confidence in bringing one’s own product to market. The analysis thus provides an advantage by helping identify the product’s market position in light of competitors’ patents. Commissioning an FTO analysis may also help avoid patent infringement litigation in court, which can require significant company resources such as time and money.

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