FTO, patentability and validity searches compared

A freedom-to-operate (FTO) search asks whether your product can be made and sold without infringing someone else's in-force patent. A patentability search asks whether your own invention is new and non-obvious enough to be patented. A validity (or invalidity) search asks whether a patent that has already issued should have been granted. Each one reads a different set of documents, against a different set of claims, using a different date, so the result of one cannot stand in for another.

The three questions

Freedom to operate

The starting point is your product. You break it into technical features and look for patents whose claims could cover them. Only in-force patents and pending applications in the countries where you make, use, sell or import the product matter. Patent rights are territorial: under 35 U.S.C. § 271, infringement of a US patent happens within the United States, during the patent's term.

The age of a document works differently here than in the other two searches. A patent published in 2009 is still a risk if it is in force. A patent granted last month in a country where you don't sell is not, and an expired patent can no longer be infringed.

Patentability

The starting point is an invention disclosure, usually before an application is filed. The question is novelty and non-obviousness, so any public disclosure counts: anywhere, in any language, patent or not, as long as it came before your own effective filing date. Under 35 U.S.C. § 102(a)(1), a person is entitled to a patent unless "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." Section 102(a)(2) adds earlier-filed US patents and published applications naming another inventor, as of their own effective filing dates.

Whether a reference is still in force does not matter. A patent that expired decades ago is as good a reference as one granted yesterday. Section 102(b)(1) gives inventors a one-year grace period for their own disclosures. Many other systems, including Europe's, have no general grace period, so an early conference talk can block protection there even where it does not in the US.

Validity and invalidity

The starting point is a specific issued patent, usually one that is being asserted, licensed or offered for sale. Relevant art is anything that qualifies as prior art before that patent's effective filing date, read against its claims as issued. The core questions are anticipation under § 102 and obviousness under 35 U.S.C. § 103; a full validity review also covers grounds that don't depend on prior art, such as definiteness and eligibility.

The America Invents Act's first-inventor-to-file rules apply to applications with an effective filing date on or after March 16, 2013. Older patents are judged under the earlier version of § 102, so the date rules depend on when the target was filed.

Side by side

Where each fits in a product's life

A patentability search comes first, while the invention is still a disclosure. Its findings shape the claims: if a reference already discloses three of your four ideas, the fourth is where the claims should focus.

FTO comes later and usually more than once. Designs change, competitors' applications publish and issue, and a clearance done at the prototype stage may not cover the shipping product. Many teams run it at design freeze and again close to launch.

A validity search is reactive. It starts when a patent shows up in a demand letter, a licensing offer or acquisition diligence. Patent owners also run one on their own patent before asserting it, because the accused party will. The searches also feed each other: when an FTO review finds a blocking patent, the options are to license, design around, challenge or monitor, and "challenge" means a validity search on that one patent. At the Patent Trial and Appeal Board, inter partes review is limited to § 102 and § 103 grounds based on patents and printed publications (35 U.S.C. § 311(b)), which shapes what that search has to find.

What a good output looks like

For FTO, each blocking candidate should come with the claim quoted in full, every limitation mapped to a specific product feature, the patent's status and expiry, and any pending family members. A list of titles and abstracts is not an FTO result. The mapping works the same way as an infringement chart; how to read an element-by-element claim chart covers what to check in one.

For patentability, the useful output is the closest references with the passages that disclose each element of the invention as you plan to claim it, plus the elements nobody discloses. Those gaps are where claim drafting starts.

For validity, the output is a reference set charted against the claims limitation by limitation, a single reference for each anticipation theory, and a stated reason to combine references for each obviousness theory. That only works if the claim has been split correctly first; see how to break a patent claim into limitations.

Common mistakes

1. Treating a patentability search as FTO clearance. A patent gives its owner a right to exclude others, not a right to practice the invention. Your product can be novel and patentable and still fall inside an earlier, broader claim owned by someone else. A clean patentability result says nothing about blocking patents.
2. Ignoring pending applications. A published application can issue with claims amended to read on a product already on the market, and a family can keep continuations pending for years. Under 35 U.S.C. § 154(d), a patent owner can recover a reasonable royalty from the date the application published, if the issued claims are substantially identical to the published claims and the infringer had actual notice.
3. Reading abstracts instead of claims. In FTO and validity work the claims define what matters. Two patents with near-identical abstracts can have claims of very different scope.
4. Using the wrong cutoff date. For validity, the relevant date is the effective filing date of each challenged claim, which is often an earlier priority date rather than the filing date printed on the patent. Art dated between the priority date and the filing date may not qualify at all.
5. Searching only patent databases. Patentability and validity both reach conference papers, theses, product manuals and archived web pages. Early descriptions of a technology often appear there before anyone files.
6. Clearing the wrong countries. FTO is run per jurisdiction. A US clearance does not cover manufacturing in Germany or sales in Japan.

How One Transform handles each question

One Transform runs each of these as a separate search type. Freedom to Operate decomposes a product into features, looks for in-force patents that could read on them, scores each blocking candidate for risk with a feature-by-feature overlap analysis and the blocking claims quoted in full, and recommends a next step for each: license, design around, challenge or monitor. Prior Art looks for disclosures that predate a patent's filing and returns a ranked reference list, each reference scored against the claim elements it discloses. Validity examines a patent the way an opposing party would and scores it claim by claim on a 0–10 scale, citing the references and reasoning behind each conclusion.

Searches run in the background and most finish in minutes. Each finding links to its sources, so the result can be checked before anyone relies on it.

Next step

Decide which of the three questions you are actually asking, then run that search. You can start one from the One Transform product overview.

This article is general information about patent practice, not legal advice. For advice on a specific matter, consult a registered patent attorney or agent.