Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
Freedom to operate (FTO) is the absence of any third party IP claims against ones commercial
operations. The more that public institutions use IP protection to transfer and develop new technology,
the more likely it is that third parties will have competing IP. However, this section explains that the efforts
to analyze and deal with competing IP should be commensurate with the amount of value put at risk.
Therefore, the burden to analyze and manage FTO is usually on the licensee. However, there can be
times when a scientist needs to be aware of his/her FTO or that of his/her commercial partners.
Key Implications and Best Practices: Section 14
Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.
- Collaboration among scientists and the professionals who conduct freedom to operate (FTO) analyses is essential. The scientist is the most important person to explain the science behind technology, to help others understand the materials and the scientific approach, and sometimes to explain what specific patent claims mean. A scientist is the expert in his or her area of research and can provide important leads to other scientific groups, publications, and terms of art.
- Teams conducting FTO analyses will also need to understand precisely what the product is, how it was developed, what materials were used, and what reports were prepared. The purpose is not to check on the work, but to ascertain that all relevant information has been considered in the FTO analysis. It is important also to know what tangible property from a third party contributed to a product. A scientific member of an FTO team will need to provide this type of basic information for the FTO analysis. One of the best ways to manage that information is through careful record keeping, including rigorously kept laboratory notebooks.
- The results of an FTO analysis may allow you to make better use of technologies in the public domain and inform your choice of research tools or vector constructs. The analysis also may alert you to scientific discoveries and inventions related to your work.
- An FTO analysis is a foundation of IP management, but it is also something more. It is a way to demonstrate to your colleagues that you respect their property rights and understand that, when properly managed, intellectual property leads to the greater sharing of technology and related information. In a very real sense, it is a way of building relationships based on trust.
- Both patent search engines and scientific search engines are available at no cost on the Internet (such as the U.S. Patent and Trademark Web site and Google® Scholar).
- Knowledge of how to access, manipulate, and mine these tools for valuable information will serve you and your program well. Hence, you should encourage your staff to become well versed in Internet database search skills, and do not hesitate to ask your technology transfer office to organize short patent search workshops.
Freedom to Operate, Public Sector Research, and Product-Development Partnerships: Strategies and Risk-Management Options
by Anatole Krattiger
Freedom to Operate: The Preparations
by Stanley P. Kowalski
How and Where to Search for IP Information on the World Wide Web: The “Tricks of the Trade” and an Annotated Listing of Web Resources
by Harry Thangaraj, Robert H. Potter, Anatole Krattiger