AuthorAusten Zuege
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
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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).
zue59005_01_c01_001-038.indd 2 7/20/17 8:38 AM
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
zue59005_01_c01_001-038.indd 3 7/20/17 8:38 AM

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