Freedom to Operate (FTO) Search
Overview
What is a freedom to operate search for?
A freedom to operate (FTO) search answers the question whether a product you plan to manufacture, sell or import in a given country, or a process you plan to use there, falls within the scope of other parties’ patents or utility models in force in that country. It is carried out before launch, because infringement exposes you to an injunction, a recall of products from the market, surrender of profits and damages. The cost depends on the time required; we recommend a search of at least 10 hours, with prices starting from approx. EUR 1,400 (PLN 6,000) net.
A freedom to operate search is not the same as a patentability search. Patentability tells you whether you can obtain a patent for your solution. Freedom to operate tells you whether you can use your product without infringing. A product can be new and patentable, and still infringe an earlier patent with broader claims. A prior art search, in turn, is a general review of patents in the field in which you plan to develop a new solution, usually done before R&D work starts, so that the project can be adjusted to what is already known. We describe it on a separate page: Prior Art Search.
Service details
Which rights are checked in Poland and in Europe?
A patent is effective only in the country where it is in force, so the search is carried out for specific markets. In Poland, we check patents granted by the Polish Patent Office, European patents validated in Poland, utility models and, for pharmaceuticals and plant protection products, supplementary protection certificates. The Unitary Patent does not cover Poland, but it covers 18 EU states; when exporting to those states, a single decision of the Unified Patent Court can prohibit sales in all of them at once.
Published applications are checked as well, because once the patent is granted the proprietor can claim compensation for the period from publication of the application. We therefore search Polish, European and international (PCT) applications that may still enter the national phase in Poland or the regional phase in Europe.
Entering the Polish market: what is different?
Three points regularly surprise foreign companies:
- European patents count only if validated in Poland. A European patent has effect in Poland only if a Polish translation was filed with the Polish Patent Office in time; we check the Polish register, not only the EPO register.
- A Unitary Patent alone does not block sales in Poland. Poland has not ratified the Unified Patent Court Agreement, so unitary effect does not extend to Poland. The same invention may, however, be protected in Poland by a validated European patent or a Polish national patent.
- Utility models matter. Polish utility models are registered without examination of inventive step and last up to 10 years. For mechanical products and devices they are a common source of risk that a patent-only search misses.
How much does a freedom to operate search cost and how long does it take?
The cost depends on the time required. We recommend a search of at least 10 hours, with prices starting from approx. EUR 1,400 (PLN 6,000) net. The number of hours grows with the number of countries, the complexity of the product, the number of documents to be analysed and whether a detailed infringement risk assessment is needed for each document. Extensive searches covering several markets may take several dozen hours. We agree the scope and the number of hours before starting work.
Service scope
Our services include
Countries and markets
Defining the countries in which we assess the risk: where the product will be manufactured, sold, stored or imported, or where the process will be used.
Search of rights
Searching national patents, European patents validated in the relevant country, utility models, supplementary protection certificates (SPC) and published applications still under examination.
Legal status
Checking legal status: whether a granted right is in force, when it expires and whether a late renewal fee can still be paid.
Claim analysis and risk
Analysing the claims against the features of your product or process and assessing the risk of infringement.
Recommendations in case of conflict
Recommendations in case of a conflict: design changes to avoid the patent (design-around), licence, opposition or revocation of the conflicting patent.
Monitoring
Monitoring new publications after the search.
Contact
Launching a new product?
Describe your product and the countries where you plan to manufacture or sell it. We will propose the scope of the search, the number of hours and the turnaround time.
FAQ
Frequently asked questions
No. A patent gives you the right to prevent others from using your invention, but not the right to use it yourself if your product falls within the scope of someone else's earlier patent. In other words: if you have developed an improvement of a product patented earlier by someone else, you can patent the improvement, but to use it you need a licence under the earlier patent.
No. Patent applications are published 18 months after the priority date, so the most recent applications are not known to anyone. For longer projects the search should therefore be updated. Moreover, a shorter search cannot guarantee that all relevant documents have been reviewed.
As early as possible: a preliminary review before the product is designed (a general prior art search works best at this stage), and a detailed search before manufacturing, sales or import start (a full FTO search on the final design). Changing a design at the project stage is much easier than after launch.
There are several options: changing the design to fall outside the scope of the claims (design-around), a licence, buying the patent, an opposition or an action for revocation if the patent was granted although the invention lacked novelty or inventive step. If you used the solution in good faith in Poland before the priority date of the other party's patent, you may be entitled to continue using it to the same extent (prior user right).
No. When exporting outside Poland, the patents in the destination countries must be searched.
Sources
- Polish Industrial Property Law, consolidated text Journal of Laws 2023 item 1170, Art. 43, 63, 66, 71, 94 to 100, 285 to 288: https://isap.sejm.gov.pl/isap.nsf/DocDetails.xsp?id=WDU20230001170
- Act of 14 March 2003 on European patent applications and the effects of the European patent in Poland, Art. 6: https://isap.sejm.gov.pl/isap.nsf/DocDetails.xsp?id=WDU20160000002
- Regulation (EU) No 1257/2012, Art. 18(2): https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:32012R1257
- Agreement on a Unified Patent Court, Art. 32 and 34: https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:42013A0620(01)
- WIPO, TISC Toolkit “Using Inventions in the Public Domain”, Tool 5 “Freedom to Operate”: https://www.wipo.int/documents/d/tisc/docs-en-tisc-toolkit-freedom-to-operate-description.pdf