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 technology transfer office needs to be aware of a technology’s FTO in order to transfer it
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.
- The management of patent infringement risks requires a good knowledge of the strategic options available. These options include legal/licensing, business strategies, and R&D strategies.
- Unlike at a private company, where business/legal/financial conditions often determine R&D strategies, licensing officers in public sector institutions rarely influence research projects and institutional policy. The role of the technology transfer officer as communicator in the public sector is therefore much more important for bringing about an IP management “culture” throughout the organization.
- A freedom to operate (FTO) analysis is an interdisciplinary endeavor best executed through FTO teams. These teams, made up of legal, business, and scientific professionals, are in themselves useful for strengthening intra-institutional dialogue and communications.
- The role of the technology transfer officer, and that of attorneys who may produce legal FTO opinions, is generally to advise senior management. It is a manager’s purview, based on your input, to decide how to deal with the risks identified in your FTO analysis.
- Much work leading to a legal FTO opinion can be done in-house, working with scientists, technology transfer professionals, business people, and others. The role of patent counsel is important for formal legal FTO opinions, but this expense may not often be required or justified in public research settings.
- Evaluate the pros and cons of free versus subscription-based patent search sites. Quite often, free services are limited in content and scope and do not allow for myriad search capabilities of paid services. But many free sites, such as WIPO’s PatentScope, are increasingly adding extremely valuable features.
- For an academic or public institution, legal FTO opinions are unlikely to be needed for the majority of technology transfer functions. They might be applicable if the institution is engaged in downstream product development and commercialization.
- One way to cut costs is to conduct the background research for an FTO analysis in-house. The compiled file of relevant art can then be provided to patent counsel, who can then further analyze, conduct additional searching to fill in suspected gaps, and render an FTO opinion. Universities with law schools might be able to give law students valuable internships in this manner.
- Through good licensing practices (including appropriate indemnification provisions and warranty disclaimers), much of the risk associated with IP infringement can be transferred to licensees who take over products from the public sector.
Freedom to Operate, Public Sector Research, and Product-Development Partnerships: Strategies and Risk-Management Options
by Anatole Krattiger
Freedom to Operate: The Law Firm’s Approach and Role
by Gillian M. Fenton, Cecilia Chi-Ham, Sara Boettiger
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
Managing Liability Associated with Genetically Modified Crops
by Richard Y. Boadi