Presenting, Preserving, and Protecting Information and Deliverables

• Author: Austen Zuege
• Pages: 393-439

9

Presenting,

Preserving, and

Protecting

Information and

Deliverables

This chapter will help you learn:

• How to effectively present information obtained during a freedom-

to-operate (FTO) study

• How to organize and archive FTO study materials for later reference

• How to understand whether search results and accompanying

documents can be shielded from discovery as either privileged

documents or as work product

• How to avoid inadvertent waiver of privilege and work-product

protection and what to do should FTO materials be accidentally

disclosed

Planning and completing an FTO study can produce a wealth

of information that requires capture. This information ranges from

details regarding the proposed product or process studied, to a listing

of information uncovered during searching, to an analysis of potential

risk presented by specific patents or patent applications or entire pat-

ent families. Whether presenting a list of search results or analyzing

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

key patents, it is important to establish guidelines for producing doc-

uments related to FTO studies. By way of examples, this chapter and

the appendix illustrate a number of ways to present relevant infor-

mation. These examples, while specific, can be varied or modified as

needed to ensure that the clients or stakeholders have the information

they need or desire.

9.1 Guidelines for Presenting Information

Effective communication of the results generated by an FTO study

requires consideration of a number of different factors including proj-

ect goals, the audience’s familiarity with patent laws, and personal

preference. In some cases, a project initiator wants a comprehensive

report on a particular proposed product, or feature or element thereof,

including descriptions of patents no longer in force, descriptions of

patents that discuss the pertinent technology only generally, and the

particular status of pending applications’ claims. Having a compre-

hensive report adds confidence to a decision to pursue or not pursue a

particular course of action. Other times, the project initiator just wants

to know if its product is “clear” and what general risks are involved

without wanting details of each and every patent and patent applica-

tion encountered during the search and analysis. Too many reported

references, particularly references that relate only to background tech-

nology of the proposed product, can make reviewing the results from

an FTO study overly tedious. In the end, results and documentation

should be tailored to the audience using formats that meet the sorts of

project goals discussed in detail in Chapter 3.

9.1.1 Consider the Audience

This chapter refers to a project initiator, such as the literal or hypothet-

ical “client,” who has requested that an FTO study be performed. In

some cases, the project initiator is a company’s in-house legal coun-

sel that requests a law firm patent attorney perform the study. Other

times, the project initiator is a member of a company’s legal, product

development, or business development department and the study is

performed by one of the company’s in-house patent attorneys. Differ-

ent “clients” may require different types of documents for presenting

information regarding an FTO study. For example, an in-house patent

attorney will be familiar with applicable patent laws and able to parse

out the elements of a patent claim with ease. On the other hand, a

businessperson without a great deal of patent experience may require

the presentation of additional information to fully understand the

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Chapter 9: Presenting, Preserving, and Protecting Information 395

risks identified by an FTO study. Sometimes, special information gen-

erated solely for upper management may be needed, in a presentation

rather than a written report, in order to tie together the legal aspects

of an FTO study with business considerations while recognizing that

upper management may not understand or care about the intricacies

of the legal analysis involved. This chapter discusses a number of

ways to present information about FTO studies and provides some

examples. Audience understanding of patents and personal taste will

likely determine the best way to present information. These examples

are meant to be a starting point and offer an idea of the types of infor-

mation that are generally considered important by most audiences.

9.1.2 General Guidelines

Regardless of the intended audience for the results of an FTO study,

a number of general guidelines should be considered for the report-

ing of results. When using a vendor for FTO activities, especially to

perform patent searching, customers should be wary of reports that

are bloated with inefficient presentations of information or weighted

down by flashy graphics that add no substance. It is a common trick

to see a “quantity over quality” approach to reporting patent search

results.

“More information is not always better. . . . [A] major preoccupation of

humans is filtering, interpreting, and understanding the overload of

information with which they are faced.”1

Liquid laundry detergents used to be commonly sold with large

amounts of filler—usually water. Today, “concentrated” versions are

widely available in much smaller packages that typically contain the

same amount of detergents (cleaning power) as in the older, larger

container, just without the filler. In much the same way, patent search

reports are sometimes bloated with “filler” that has no substantive

value.

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

 S, N,  B 375–77 (3d ed. 2012).

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