Justus Kreuels - 18. February 2019

Freedom-to-Operate analyses: Are own products infringing third party property rights?

What to do

Clarify which features of the product or service could be problematic with regard to third-party patents. Search for relevant patents and analyse the patents found. Then evaluate the risk of the patents for the product, if necessary, in the form of patent attorney opinions.

These are the questions

What is innovative about your own solution? What is used in this or a similar way by your competitors? Is there already information regarding critical intellectual property rights?

Our recommendation is to create a list of the potentially critical features and then narrow down those features in terms of particular explosiveness.

Research Options

In-house research

It is possible to do your own research in public databases (e.g. Depatisnet, Espacenet or WIPO) or in commercial databases (e.g. Thomson Reuters). The advantage is that it is not expensive and you can develop a feel for competitors' innovations. However, it is very time-consuming and you have no support for legal assessment.

Research Institutes

Alternatively, you can hire a research service provider. The prices for this depend on the scope, language and quality of the preparation of the search result. The advantage is the high legal certainty regarding the completeness of the search. Usually, a very high number of documents is found, which then have to be analysed.

Research by patent attorneys

The third option is to work with a patent attorney. Depending on the situation, he will decide whether it is necessary to resort to external service providers. Patent attorneys have professional search tools at their disposal. Advantages are:

  • Technical and legal detailed knowledge enables problem-specific searching.
  • High legal certainty regarding completeness of the search.
  • Most of the time, patent attorneys can greatly reduce the number of documents so that you only have to deal with truly relevant patents.
  • The information obtained can be used by you and the patent attorney in the further course of the project.

Regarding Justus Kreuels:

Justus Kreuels, German and European Patent Attorney since 2011/2012, studied mechanical engineering at the TU Munich and the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.

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