Presenting, Preserving, and Protecting Information and Deliverables

AuthorAusten Zuege
Preserving, and
Information and
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
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including descriptions of patents no longer in force, descriptions of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
“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
1 D O. C, L  I: A S  R  I-
 S, N,  B 375–77 (3d ed. 2012).
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