Why should I carry out an Infringement Search?
Once a final product has been developed and made ready for market, an infringement search can be used to identify whether the aspects of the product fall within the monopoly covered by one or more third party patents or designs. Infringement searches can go by different names, most commonly Freedom-to-Operate (FTO) and Clearance Searches. They should be conducted prior to launching a product and depending on the stage of development of the product, they may also provide details of obstructive claims that could be fed into redevelopment in order to design around such obstructions.
Infringement searches are limited by date and territories; the date limit is usually set to twenty years to cover potentially ‘alive’ patents and twenty five years for registered designs. However, if the product is likely to infringe on patents that may be eligible for a grant extension then you should consider extending the date limitations accordingly. The territory limitations should be set to the countries in which you intend to manufacture and sell the product. Focusing the territories of a search can significantly reduce the search size and thus the costs associated.
It’s important to have an infringement search carried out if you are to be seen to be “due diligent” and not be accused of “wilful infringement” (defined as a total disregard for third party patents) which can result in more extensive damages.
If you’ve had a freedom to operate (or infringement) search carried out in the past, remember to have it topped up to allow for unpublished patents, patents waiting to be published when (or published after) you had your search carried out.