Organizing and Structuring an FTO Study

• Author: Austen Zuege
• Pages: 135-178

4

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 4.2.1.1 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

employees.

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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