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The difference between a novelty search and Freedom To Operate | EP&C

The-difference-between-a-novelty-search-and-Freedom-To-Operate.jpgIn my previous BL&G I pointed out the importance of a Freedom To Operate study, which enables you to find out if you would be infringing the patent rights of others by bringing your innovation or product onto the market. Regardless of whether you have patented your own invention you will need to take account of the playing field you are about to enter. It may already be protected by Intellectual Property rights and may therefore be a no-go area for you.

Entrepreneurial room

A so-called Freedom to Operate study gives you insight into your entrepreneurial room. It gives you insight into your market position, before you invest in manufacture, marketing, sales channels, etc.

Contrary to what a lot of people think, a novelty search (which you receive when you file a patent application) does not necessarily contain this information.

Why not? Isn't it true that both of these look into the existence of conflicting patents?

It is, but a Freedom To Operate study approaches the issue from a different angle. I have listed the differences for you below.

  Freedom To Operate study International
Novelty search
Objective of the study/search Is the market open for my product? Does the invention meet the criteria of novelty, inventive step and industrial applicability?
Geographical Limited to the area in which you want to operate, e.g. the Benelux. Searches are always conducted on a worldwide basis.
Has incriminating patent been found?
  • Is it still valid? No? Then you can enter the market.
  • Can you get round the patent by making an adjustment, for instance? Yes? Then this too is not a problem.
  • Is the patent legally valid? No? Then it is not relevant for you.
This is always relevant. If an innovation has already been described, your invention will no longer be novel because it does not meet the patentability criteria. 
What kind of documents are examined? Only patents and patent applications that have already been published. Patent literature as well as other literature
Topic of the search The entire product you are going to bring onto the market. Only the innovation. 

If I use the example of the invention of a bicycle + seat again: you have a patent on a bicycle with seat.

Novelty search versus ...

A novelty search looks at whether the innovation (the use of a seat on a bicycle) is novel. Has a bicycle with seat been invented, used, described, etc. anywhere in the world at any time in the past? Or is it obvious to fix a seat on a bicycle? If it turns out that your invention is novel, inventive and susceptible of industrial application, it will be patentable.

... Freedom To Operate study

If you commission an FTO study for your bicycle with seat, the study will not only focus on patents on bicycles and seats, but also on relevant rights that may exist on the other parts. On the handle bars, for instance, or the material used to make the seat. An FTO is particularly important if you manufacture these parts yourself. If it turns out that there is a patent in Germany on the gel you use in the seat, you cannot automatically enter the market there.

In short

A novelty report is a good start. It gives you insight into what has already been patented and into your competition. However, if you want to enter the market with your product, you should commission an FTO study. This prevents a situation in which you invest in a market that is already protected by rights held by others. If you infringe an existing patent right, this could end up costing you dearly.