Introduction

• Author: Austen Zuege
• Pages: 1-37

1

Introduction

This chapter will help you learn:

• Why patent freedom-to-operate (FTO) studies are important, and

the practical consequences of overlooking patent infringement risks

• The differences between patent FTO studies and other types of

intellectual property (IP) studies

• What is contained in this book, and how it is organized

• How different types of readers should approach reading this book

This introductory chapter provides very general information

about patent FTO studies. It begins with some explanation of the

intended audience and some suggestions about how readers from dif-

ferent backgrounds should approach the book. The remainder of this

chapter is largely devoted to contextualizing patent FTO studies in

the broadest sense, providing explanations of why patent FTO studies

are important and why a book like this is needed. It concludes with

summaries of each subsequent chapter.

1.1 Who Should Read This Book

The basic premise of this book is to outline how to decide whether

patent infringement risks are of concern, how to go about investigat-

ing such risks, and how to deal with any risks that are identified. The

scope of the book is broad, and provides a wealth of information about

tasks and topics that may involve numerous different professionals in

real-world applications. Everyone from in-house and private practice

1

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2 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies

attorneys to businesspeople to non-lawyer patent professionals to

engineers and scientists to academics and librarians should find valu-

able information and tips in this book. Given the range of possible

readers, a discussion of “how to read this book” is provided in Section

1.2 to aid in finding the contents that are of most use to particular

types of readers approaching the book from different perspectives

and in different contexts.

More generally, the ultimate goal of this book is to develop read-

ers’ expertise in providing solutions to potential patent infringement

problems, because “part of what makes one ‘expert’ in the law is an

ability to link the recognition of a problem to potential solutions.”1

This can be expressed in terms of a “value-added arc” that extends

from (1) identifying the most relevant information, to (2) recognizing

how certain information will affect a client, to (3) packaging informa-

tion so as to effectively communicate necessary facts and underlying

issues in a concrete way to the client (or judge or jury), and finally to

(4) packaging knowledge in such a way that a client (or judge or jury)

will act on it through understanding how information will be used in

deciding a case or legal issue.2 In the patent FTO context, specifically,

this means understanding

• how to locate relevant patent documents,

• how to analyze those patent documents in relation to both

applicable law and the technical aspects of a particular pro-

posed product (or process),

• how to develop risk management strategies that form the

foundation for future action (e.g., a litigation defense strat-

egy), and

• how to affirmatively implement these things.

While much of this book details methodologies for performing

FTO studies and options for mitigating risks associated with patent

infringement, in the end, the level of acceptable risk is a matter of

choice. An FTO study does not have to be directed toward the futile

pursuit of a zero-risk environment, but rather can be used to gener-

ate meaningful data to allow decision-makers to make more informed

decisions. An FTO study allows conscious decisions to take certain

1 D O. C, L  I: A S  R  I-

 S, N,  B 316 (3d ed. 2012) (citing C. Cole & C. Kuhlthau,

Information and Information Seeking of Novice versus Expert Lawyers: How Experts

Add Value, Information Seeking in Context 2000 Conference (Aug. 16–18, 2000)).

2 Id. at 316 (citing Cole & Kuhlthau, supra note 1).

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Chapter 1: Introduction 3

risks while avoiding others, to avoid the inadvertent assumption of

risk. A well-thought-out study also allows the most useful data to

be gathered and analyzed, to avoid succumbing to the temptation of

gathering data that is merely easy to retrieve but substantively less

useful for decision-making.

The present book is meant to serve an assortment of practitioners

and businesspeople whose activities directly or indirectly intersect

with patentable subject matter. Anyone involved in patent searching

or patent risk management should find benefit in reading this book to

build competencies and assess best practices, as well as anyone seek-

ing to better understand the legal risks associated with technology

businesses and the commercialization of research and development

(R&D) efforts. In-house counsel, whether dedicated IP counsel or

general counsel, should find a wealth of information to assist with

questions like: “Should I handle a patent FTO study in-house or

seek out a vendor?” (Chapters 3 and 4); “How do I distinguish a reli-

able FTO study from an unreliable one?” (Chapters 5, 6, and 7); and

“How can I manage an FTO study efficiently and effectively from the

start?” (Chapters 3–5). Private practice patent attorneys will also find

the book valuable as a resource to understand best practices and the

mechanics of handling FTO studies for clients.

Non-attorney patent searchers can use the book to better under-

stand their roles as part of larger FTO studies, as well as to gain insights

on specific search methodologies suitable for FTO studies. Non-

attorney inventors, engineers, scientists, investors, and business-

people can also learn from this book. Anyone trying to bring new

products, services, or technology to market while understanding the

risks associated with doing so can learn both from the broad over-

views of basic patent law concepts contained herein and the overview

provided by the book’s discussion of available risk management tech-

niques, even if the mechanics of the FTO process are of less impor-

tance because competent providers will be hired for any necessary

studies. These topics are of interest regardless of whether a business

venture holds its own patent rights, and regardless of whether the

product or service sought to be introduced is believed to have no

“new” technology—in fact, a lack of admittedly new inventions tied

to the product or service might mean that aspects of it overlap with a

third party’s patented invention and therefore create a risk of litiga-

tion. The book should be useful for readers located in any jurisdiction

around the world, though reference is made primarily to U.S. patent

laws to avoid becoming mired in excessive jurisdiction-specific detail.

With that said, some caution is in order to consider the unique patent

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