Organizing and Structuring an FTO Study

AuthorAusten Zuege
Organizing and
Structuring an
FTO Study
This chapter will help you learn:
How to identify and educate stakeholders of a patent freedom-to-
operate (FTO) study
How to determine the scope of the FTO study
How to define technical features of a product for the FTO study
Where and how to obtain technical information for the FTO study
When to begin an FTO study
When to update an FTO study that has already been completed
The relationship between the FTO study parameters and the FTO
study budget
How to pay or bill for an FTO study
Searching for patents is only one aspect of performing an FTO
study. Effective searching and analysis will be greatly facilitated by
proper organization of the project. Among other things, stakeholders
should be identified; proper scope of the study should be determined;
and deliverables, timelines, and budget should be defined. In order
to execute a successful, quality FTO study, time and effort must be
applied to ensure all aspects are performed with quality and care.
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136 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies
4.1 Identifying Stakeholders
One of the first steps of organizing a project is to identify those with
important roles throughout the process. This includes determination
of the actual client, the owners of the relevant technical information,
etc. In some cases, such as that of a solo inventor, all roles may consist
of the same person. In other situations, such as that of a multinational
corporation, there could be several individuals occupying each role.
4.1.1 Key Personnel
A good place to start when identifying personnel for an FTO study is
to determine whom the project directly affects. In the case of a small
start-up company or solo inventor, identifying key personnel is a simple
process. In the case of a multinational corporation, however, determin-
ing key personnel may be a much more difficult task. Several questions
may help determine the key personnel. Who asked for the study to be
performed? Who is paying for the study? Who is in contact with the
firm that is performing the search and/or analysis? If the answer to
all these questions is the same person(s), then the determination of the
audience is straightforward. If the answer to each question is different,
some further determination will be required to figure out the audience.
One may ask: “Who cares? The search is the search, so it makes no
difference whom the results actually affect.” While the search results
may not change, it may be desirable for certain companies to limit
who reviews the results. Some employees may not be accustomed to
the level of confidentiality to be maintained in an FTO study. Cer-
tain personnel within a business may also be better equipped to make
decisions and analyze risks associated with the results of an FTO
study. Providing results to company employees who are ill-equipped
to make decisions based on those results may create unnecessary work
and waste time for several people involved, and may reflect poorly on
personnel performing or managing the study. Further, the final writ-
ten reports, as discussed in Sections and 4.2.3 and in Chapter9,
may change depending upon the audience. This includes both the for-
mat of the documents as well as the content. What comes across as a
useful, professional report to one person may come across as clunky
and confusing to another, solely based upon a difference in the read-
er’s background and experience. Therefore, it is crucial to determine
upfront who the audience will be for each FTO study performed.
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Chapter 4: Organizing and Structuring an FTO Study 137
4.1.2 Fostering Collaboration
Determination of key personnel must also take collaboration into
account. In larger companies, it may be necessary for multiple divi-
sions of the company to work together, for example, in providing
technical information and analyzing risk. Cooperation between
employees generally works out better if those affected are notified of
their roles ahead of time. If, for example, a research and development
(R&D) department is notified at the last minute that half of their engi-
neers (or other technical employees) need to take an hour out of their
day to speak with a patent attorney just before those engineers have
their own set of design deadlines approaching, no one from R&D will
be happy, goodwill may evaporate, and ascertainment of technical
information for the FTO study may be greatly delayed. By letting that
same R&D department know weeks ahead of time, they will be able
to better schedule their time, which in turn will result in more quality
information provided, as well as better collaboration through happier
In some cases, multiple companies may have jointly designed a
new product. While performing an FTO study on the new product
for a first company, it may become necessary to ascertain information
regarding the product from a second company. Because of the legal
complexities that arise with cross-company communication, the first
company (the project initiator) should always be consulted by any
external firms performing the FTO study prior to contacting the sec-
ond company. At the least, it should be ascertained upfront who may
be contacted at the second company, by whom they may be contacted,
and what information may be shared with the second company. If it
is likely that a second company will need to be consulted on an FTO
study, it is best to set out a plan with the first company at the start of
the project on how communication with the second company will be
handled so that delays do not later arise and confidentiality of infor-
mation is maintained.
Furthermore, establishing responsibilities upfront can avoid a
frustrating circle in which every party insists that FTO study support
is someone else’s responsibility. Whether within a given company or
between different companies in joint development situations, engi-
neers sometimes may avoid responsibility for assisting with FTO
efforts. Sometimes such behavior can be avoided with efforts to edu-
cate them.
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