Patent Due Diligence and FTO

The freedom to operate process generally comprises an in-depth search and review of publicly available patent documents that relate to your commercial/pipeline products. The purpose is to identify whether a third-party owns any patent rights that may stop you from placing your product on the market.

Commercially focused advice about FTO searches

The FTO search may be conducted at any stage, but is most commonly conducted before or during a due diligence process, which is often required for a company purchases or a milestone investment, before commencing next-stage research or a development project, or as a part of a regular IP health-check.

We work with you to decide on the breadth of the search and appropriate search criteria. We then either conduct the searches in-house or instruct an external a search provider to gather the raw data, which we analyse and present in a report that is useful to your business.

Our team of patent specialists, including patent litigators and patent attorneys, are able to provide commercially-focused advice on when to conduct FTO searches, and to quantify risks and provide options to overcome any issues identified by the FTO analysis. This may include defensive strategies such as licensing, arbitration and design-arounds, or more offensive strategies such as infringement and invalidity proceedings.

Intellectual Property (IP) rights, and particularly patent rights, are commonly bought, sold or licensed as part of a corporate deal or transaction. Proper assessment of these rights is therefore a vital part of the due diligence process. 

Our team of patent attorneys is highly experienced in assessing patent portfolios for due diligence. This assessment can include a basic search, status check and a ‘red flag’ report, or a detailed review of the scope of protection, filing strategies, and ownership. We are able to stress test a portfolio to identify key strengths and weaknesses.

You can find out more about patent attorneys at CMS below: