It’s funny the vast differences acronyms have. On Instagram, “FTO” stands for “flexible time off,” and on Facebook, it stands for the game “Faery Tale Online.” For purposes of this article and in the patenting world, an FTO is an assessment of the ability to make, use, and/or sell products/services without infringing another party’s rights.

Do I need an FTO performed if I already have a patent?

Now for my favorite attorney answer…it depends. First, we must understand what rights a patent gives.

A registered patent provides the owner of a useful, new, and non-obvious invention of patentable subject matter with the legal right to exclude others from making, using, or selling the patented invention for a limited period of time.

Isn’t “legal right to exclude” just a fancy legal way of saying that I have the right to make, use or sell my patented invention?

No! The right to exclude does not mean the same as the right to make, use, or sell.

To illustrate this, suppose inventor Sue Yoo develops and patents a system – that has not been previously invented – for preventing the sinking of a boat with a breached hull. The patented invention involves manually or automatically deploying helium-filled balloons which provide the boat with the ability to remain afloat. From these basic facts, it appears that Sue Yoo’s invention met the requirements for patentability, it is useful (prevents boats from sinking), new (hasn’t been previously invented), non-obvious (debatable but hey, for our purposes it’s not obvious), and of patentable subject matter (trust me on this one).

Now suppose a second inventor, Lee Gull develops and patents a system that incorporates all of Sue Yoo’s patented invention and adds fins to the outside surface of the helium balloons and solar-powered motors to spin the helium balloons. Lee Gull’s invention provides the boat with the ability to float and provides the boat with the ability to move towards a safe port. From these basic facts, it appears that Lee Gull’s invention met the requirements for patentability, it is useful (prevents boats from sinking AND provides propulsion), new (hasn’t been previously invented), non-obvious (spinning helium-filled balloons on a boat – not obvious to me), and of patentable subject matter (again, trust me on this one).

In this case, Sue Yoo and Lee Gull both have patented inventions; however, as Lee Gull’s invention includes all of Sue Yoo’s patented invention, Sue Yoo has the right to prevent Lee Gull from making, selling, or using his patented invention. If Lee Gull decides to throw caution to the wind and make, sell, or use his invention, Sue Yoo may sue Lee in a legal action. However, if Lee Gull had performed an FTO, he may have avoided legal action from Sue Yoo and/or developed his system so that it did not incorporate all of Sue Yoo’s patented invention.

What are the benefits of an FTO?

In general, an FTO may:

  • Provide a landscape of patented processes, machines, manufacture, or compositions of matter. Very useful in areas that are heavily patented;
  • Provide knowledge of how to “work around” inventions that are currently patented; and
  • Provide an opinion on whether the invention – in its intended state – infringes upon the Intellectual Property rights of another party. While not an absolute guarantee of non-infringement, an opinion may significantly reduce the chances of finding yourself on the receiving end of a cease and desist or patent infringement complaint.

When should I have an FTO conducted?

Again, my favorite attorney answer…it depends. In general, earlier is better than later – think of the product development costs involved with launching a new product – but at any rate, it should be completed prior to you making, using or selling any process, machine, manufacture, or composition of matter that you developed, regardless of whether you seek a patent.

Those needing assistance with FTOs may reach me at lee.rendeiro@henlaw.com.