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Freedom to Operate 101: How Not to Get Sued When You Launch Your Product

by Patents Integrated
May 19th 2021

The joy of launching a successful prototype can often derail a company that hasn't done their IP research. Enter the Freedom to Operate Analysis. Rather than get bombarded by cease and desist lette... More

Hello and welcome to the novel and non obvious podcast where we discuss the intellectual property topics impacting the startup world. My name is Yoriko mori to the host of this podcast and founder of patents integrated Today, we'll be discussing how not to get sued when you launch your product or the other way to say that might be freedom to operate 101. So you've got a successful prototype and it looks like people like it. You've shown it to a number of people and they say, hey, that's great. I would love to buy this product from you. So you decide you want to get into selling the product to a larger market. How do you reduce the risk of getting a cease and desist letter or what we like to call in our industry a nasty Gram from your biggest competitor? As soon as you start selling your product, this process of de risking your product and your company is called a freedom to operate analysis basically you're trying to identify the risks around your product and figure out ways to minimize those risks. And there are very specific parts of a freedom to operate or FTO analysis that specifically involved intellectual property.

one Big 1 is your company and product name. So often entrepreneurs pick a company name or a product name because they think it sounds good and they kind of like the idea without really doing their due diligence on if there's anyone else already using that name and this is such an easy one to avoid, but it's one that's so easily overlooked by so many. I hear about so many companies that have gotten the nasty gram or the season desist letter from an existing company as soon as they launch their website or their product marketing and then they have to scramble to completely revamp their product to rebrand. And it can be really expensive especially for a startup company. So the way that you get around this is kind of easy. All you have to do is to do a browser search on that company name or product name that you have in mind before you get wedded to it. For extra credit. You can also do a registered trademark search.

For example, you can use a public database like the trademark electronic search system or tests which is available through the US patent and trademark office. It simply works like a regular search engine. You type in the name that you have in mind and it'll tell you whether or not someone else has registered a trademark on that same name. That will also give you an idea of whether or not the name that you have in mind can be protected by you with a registered trademark it as well. So that's something to consider. Another factor to consider when you are doing a freedom to operate analysis is your competitor products you have to know your competition what I. P. They have what information they published through things like their marketing collateral, white papers. Journal papers etcetera. It's not just to have a really good idea of what your competitors are doing as far as their product development. Then you'll have a pretty good idea of how your product differs from what your competitors are doing. So that's a really good thing to know.

Especially when you want to be able to articulate your product differentiator and why somebody should buy your product over your competitors. It also gives you an idea of what your competitors think about their products and their value add so that you can stare away from what they're trying to do. Also regarding competitive products. A recommended step is doing both. A browser search like I mentioned earlier for the name and also a patent search for any I. P. That your competition may have filed in order to protect their own products. So that way you will know what your competitors are protecting so that you can stay as far away from your competitors protected I. P. As possible. So say you do a patent search and you find that your competitor has lots of patents around their products that you think, oh no I think my product might be pretty darn close to some of the stuff that they've patented in that case.

Then there is another option rather than just simply giving up in your product, you may be able to engage a patent attorney to write a non infringement opinion for you. Now this is something that I don't always recommend because usually non infringement opinions are very very narrow in scope. So they would want to give the opinion on a single claim within that patent and a single feature of your competitor products. So usually that's really really narrow. Part of the reason why is because if you start broadening that opinion then it's going to cost you tens of thousands of dollars in I. P. Attorney fees. So that's kind of a that's kind of a last resort option that you can use. If you do really think that your competitor has patent protection over certain things or certain features of your own product and you want to make sure that you do cover your behind. There are other factors like liability and regulatory issues that can also fall under a freedom to operate analysis.

For example, there are Food and Drug Administration regulations to consider if you're a medical device company. Federal Communications Commission regulations, if you have a device that communicates via electronic signals and international traffic and arms regulations or Guitar or General Data protection regulation or GDP are considerations if you're a software company. So these are all items that fall under a freedom to operate analysis. I highly recommend working with an I. P. Professional to perform a freedom to operate analysis. To minimize your risk of your company getting sued as soon as you go public with your product. We hope you enjoyed this episode of the novel and non obvious podcast. Feel free to send us comments or suggestions for startup and I. P related topics you'd like us to discuss on this podcast. At info at patents integrated dot com. Our producer is joe Davis of analog digital. Our marketing specialist is Tim Sprinkle of Layup Content. Our theme music used with permission is the Workday Takata from A Life In a Day, composed by Sherry's Lighter and performed by Michelle Stanley and flute.

Jeff. Look, watch on guitar and yours truly on cello and here's our obligatory disclaimer. The content of this podcast is informational only and not intended to be legal advice. The novel and non obvious podcast is a production of patents integrated and all rights are reserved. See you next time.

Freedom to Operate 101: How Not to Get Sued When You Launch Your Product
Freedom to Operate 101: How Not to Get Sued When You Launch Your Product
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