Freedom to Operate

Be prepared for the FTO questions that will be raised by your client/company when they want to use the new technology or expand existing technology. understand the FTO questions you should ask to make the most of your time and budget. Best practices for setting up and conducting analysis. Insight into infringement and validity analysis in Europe and US

Course Overview


  • Best Practices for Setting Up and Conducting a Freedom to Operate Analysis
  • Validity and Infringement Analysis – European and US Perspective
  • Use of Post-Grant Procedures under the AIA
  • Wrestling the Chinese Dragon
  • FTO Risks: Never Black and White
  • Litigation Planning in the Context of FTO

Who should attend


  • Patent Attorneys that have little or no experience of Freedom to Operate
  • In-house members of patent departments and R&D departments
  • Business Development Professionals
  • Others wanting to learn more or refresh their knowledge of Freedom to Operate
  • This seminar will be of particular interest to those from the chemical, pharmaceutical and biotech industries but will also be relevant to those outside of these industries

Why you should attend


  • Be prepared for the FTO questions that will be raised by your client/company when they want to use new technology or expand existing technology
  • Understand which FTO questions you should ask, to make the most of your time and budget
  • Discuss best practices for setting up and conducting a thorough analysis
  • Gain valuable insight into infringement and validity analysis in Europe and the U.S.
  • Take away practical advice on leveraging the European and U.S. systems to your advantage
  • Learn to evaluate, minimize and communicate risk effectively

Course programme

Best practices for setting up and conducting a Freedom to Operate analysis

Understanding what products and processes need to be cleared
  • Timing and scope of the project, including geographic considerations
  • Defining the search – common pitfalls
  • Result analysis
  • Understanding the business goals and effectively communicating risks
Vital aspects of infringement and validity analysis – US perspective
  • Validity and infringement analysis – tactics for “triage” on the FTO search results
  • The correct interpretation of claims in the US including differences between the courts and the USPTO
  • Pros and cons, recent trends, and statistical results
  • Cost effective approach for dealing with willfull infringement and opinions on potentially problematic or “blocking” patents
Vital aspects of infringement and validity analysis – European perspective
  • Infringement: How are claim construction and infringement analysis approached in Germany?
  • Validity: Where are the critical differences in approach across Europe and in the EPO?
  • Why does the application of the same substantive law not necessarily lead to the same result?
  • Injunctions and damage scenarios following a finding of infringement
FTO risks: Never black and white
  • Quantifying the risk of third-party patents
  • Likelihood of preliminary or permanent injunction
  • Looking at possible damages
  • Design around or licensing?
  • Reporting risks to business group
Use of post-grant procedures under the AIA
  • New tools available under the AIA and ways to use them in an FTO context
  • Prior use defence, is it applicable?
  • Use of ex parte re-examination and inter partes reviews
  • Post grant reviews; can it provide peace of mind?
Wrestling the Chinese dragon
  • IP Landscape in China
  • Strategies used by Chinese companies to leverage IP
  • Chinese FTO:
    • Effective FTO strategies
    • Conducting searches for China ** Continous monitoring
    • The ‘language issue’ (using Chinese documents)
    • Strategic options for specialist support
    • Handling obstructive IP
    • Chinese weapons
Corporate woes: timing, staffing and budgeting
  • What projects require FTOs – an In-house perspective
  • Can FTOs be done by in-house staff?
  • When do you need outside counsel?
  • How do you budget for FTOs?
Practical consideration, a Due Diligence fact pattern
  • Test your Freedom to Operate knowledge on a fact pattern
  • Discuss with the panel practical considerations for attacking the issues presented

Bespoke training

We can customise this course to meet the requirements of your organisation. Contact us to discuss your training requirements.

Previous customers include...

  • Abzena plc
  • CERN (European Organisation for Nuclear Research)
  • Danfoss A/S
  • DeltaPatents B.V.
  • DSM
  • Forensic Science Service Ltd
  • Forresters
  • Fresenius Medical Care AG & Co KGaA
  • Genkyotex SA
  • HLBBShaw
  • Hovione FarmaCiencia SA
  • IMEC vzw
  • Industrie De Nora S.p.A
  • Innovia Films Ltd
  • Nissan Technical Centre Europe
  • NLO
  • NXP Semicondutors
  • Office Freylinger S.A.
  • Patentgruppen A/S
  • Patentica
  • Queen Mary Innovation Ltd
  • Research and Markets
  • SKF Industrie Spa
  • Torner Juncosa I Associats SL
  • Total Research & Technology Feluy SA
  • Valneva Austria GmbH
  • Vestas Wind Systems A/S
  • VIB
  • Withers & Rogers LLP
  • Xaar Plc