Freedom to operate opinions and clearance searching

Prudent steps to minimise the risks to your business

Careful consideration of your freedom to operate reduces the risk of investing in a new product, process or brand that you are not allowed to make, use or sell because of your competitors’ legitimate intellectual property rights.

Preliminary assessment and searching

This consideration typically starts with a preliminary assessment of the risks and the form of intellectual property rights most likely to be relevant, then selecting and searching the appropriate official databases for potentially relevant rights. This searching is referred to as ‘clearance searching’ or ‘infringement searching’ (amongst other things) and is usually conducted on a country-by-country basis.

Search strategy

The search strategy is typically contingent on the preliminary assessment of the risks. For example, if you propose to release a product incorporating functional details similar to a litigious competitor’s product, a patent clearance search for patents owned by that competitor would be appropriate. On the other hand, if you propose to rebrand an existing product, patent and design rights are unlikely to be relevant, although a search for relevant trade mark registrations and unregistered trade mark rights would be appropriate.

The opinion

Clearance searching typically produces a list of potentially relevant intellectual property rights. The next step is to review these search results to determine whether your proposed product, process or brand would infringe any of these rights – i.e. to assess whether you are free to operate as proposed.

In relation to patents, the claims of the located patents must be compared to the proposed product or process.

In relation to Australian design registrations, the overall visual impression of the located registered designs must be compared to the proposed product.

In relation to trade marks, the similarity of the located marks must be compared to the proposed brand.

Infringement can be avoided

A freedom to operate opinion that you cannot proceed as proposed is in a sense a good result. It is better to know about the problem before investing in a new production line or paying for a national advertising campaign. The opinion does not always entirely rule the proposed action in or out. Often when relevant rights are located, the proposed actions can be modified to avoid infringement. For example, if a patent clearance search reveals a competitor’s patent that would be infringed by a proposed product, it may be possible to avoid patent infringement by modifying the proposed product (hopefully before production tooling is ordered).

More on patent coverage and patent infringement