Freedom to Operate

When considering expansion into a new business area, we can evaluate the existing IP landscape to identify any potential roadblocks and workarounds.

We can help evaluate the intellectual property landscape when you contemplate branching into a new technology area. We identify what intellectual property your potential competitors already own and whether you can work around that IP. We use both AI- and human-based research to identify the scope and quality of existing IP. Using the same litigation-based approach we employ while securing new patents, we evaluate the scope and quality of existing patents based on the patent claims and their support.

In a first pass, we assume validity of the existing patents and identify the business opportunities that avoid the scope of those existing patents. When that is too narrow, we recommend invalidity analysis as well. In many instances, older patents have claims that would not survive current subject-matter eligibility (35 U.S.C. § 101) requirements. When appropriate, we can also perform prior-art searches against the existing patents and provide element-by-element analysis to demonstrate invalidity of those patents under 35 U.S.C. §§ 102 or 103.

The methodology we apply to existing patents also applies to published patent applications. However, the claims in published applications are still subject to amendment, so we are working with a moving target. For published applications, we review the full file history, including the original disclosure and office actions to make an educated guess regarding what claims might ultimately be issued. Because of the flexibility of future claims, we have to treat the claim scope as broadly as possible. The methodology we apply for published applications also applies to continuation applications. If an issued patent has a pending continuation, then we have to consider anything in the disclosure that could be claimed.

In general, to limit the cost of an FTO search, we focus on US patents and patent publications. However, if there are other countries where protection is essential, we can analyze patents and pending applications in those countries as well. When the primary language is not English, we will work with our network of foreign associates to avoid excessive translation costs.

In addition to technical analysis of patents, we sometimes evaluate the litigation posture of the patent owners for the existing patents in the new technology area. Some technology companies use their IP primarily as a defense, whereas others actively engage in offensive litigation.

Because of the wide range of budgets and needs for FTO searches, we are flexible on the scope of our work. We can build a process that meets your needs and fits within your budget. Our FTO searches provide accurate, actionable assessments to make informed business decisions before large potential investments.

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Build and expand your patent portfolio with SankerIP's AI, software, and tech innovation expertise. For a free consultation, email [email protected] or call (510) 714-5196.