A Freedom to Operate Search is a patent landscape study that analyzes relevant patents and published applications from which Bold IP identifies potential infringement threats.  Bold IP then drafts a formal “freedom to operate” opinion, which provides a deep analysis of the relevant claims in threatening patents and assesses the product’s infringement risk and the claims’ potential for invalidity.  In its Opinion, Bold IP incorporates a complete outline of all Direct and Indirect infringement threats, and outlines the client’s best solutions.
 
A patent landscape study is particularly relevant when a third party threatens a Bold client with inducing infringement.  In this situation, the client may use the Opinion to show that, before allegedly infringing the accused product, the client:
 

  1. Obtained counsel’s non-infringement opinion; and then
  2. Relied on the Opinion in good faith.

Through this showing, the company may successfully counter allegations of actual knowledge of infringement or willful infringement by establishing its good-faith belief in counsel’s Opinion.
Scope of a Bold Patent Landscape Study
 
Bold IP collects from the client all relevant facts concerning the client’s product/invention to determine the exact scope of the patent landscape, including:
 
  1. Key aspects of the product’s design;
  2. Key competitors and competitive products;
  3. Any information or materials development personnel may have considered during the product’s design phase, such as competitive product samples
  4. Key manufacturing locations and distribution channels for the finished product; and
  5. Key customer locations.
 
Bold Strategies If Infringement Risk is Found
 
 If Bold IP determines that a published patent or application poses a substantial infringement risk, Bold IP works with its client to determine whether to:
 
  1. Redesign the product to minimize infringement risk – to take the product design outside the realm of the troublesome third-party claims, ensuring that redesign also falls outside the Doctrine of Equivalents.
  2. Institute a post-prosecution patentability challenge before the Patent Trial and Appeal Board, including Reexamination, Post Grant Review or Inter Partes Review.  These procedures often invalidate the plaintiff’s patent by offering a prior art reference that poses a “substantial new question of patentability”;
  3. Craft a reasonable license-royalty agreement that prevents royalty stacking;
  4. Conduct other follow-up activity to diffuse the problem; or
  5. Boldly patent and market the product/invention “as-is,” with confidence that any potential litigation would end at or before the Summary Judgment phase.
 
The Risks of Selling a Product Without Conducting a Patent Landscape Study
 
Identifying infringement risks is important because, where patent infringement is found, a court may assess against the infringer:
  1. An injunction preventing the infringer from making, using, selling, marketing or importing his product;
  2. Damages based on
              (a) A reasonable royalty for the use of the infringed patent;
              (b) The patent owner’s lost profits resulting from the infringer’s presence in the market [in certain                     circumstances];
     3. The court may also award the patent owner its attorneys’ fees and, in exceptional cases, up to three           times the amount of its assessed damages. 

Other Benefits of Conducting a Freedom to Operate Searches
 
In addition to identifying potential patent infringement risks, a patent landscape study may provide competitive intelligence concerning patent activity in certain technological fields. For example, the study may identify patterns of innovation that could signal:
 
  1. Technology areas that may be particularly competitive;
  2. Areas with little patent activity that may provide opportunities for the client to obtain potentially valuable patent assets;
  3. Key players in the technology space, including established companies, new entrants and collaborative activities between these or other entities.