Juhyun Ahn, Patent attorney (LEE & MOCK IP)
An FTO (Freedom to Operate) analysis is a process of assessing, in advance, whether the commercialization of a particular product or service (hereinafter collectively referred to as a “product”) may pose a risk of infringing the patent rights of others.
When a client brings a product to an FTO analyst and requests an analysis, the analyst is immediately confronted with a fundamental question: What should be examined?
At first glance, the question itself may seem odd. If there is a product, why not simply examine the product? In practice, however, it is not that simple. A product has a vast number of technical attributes. From one perspective, it may be a communications system; from another, a data processing system; and from yet another, a user interface. Numerous technical elements and functions coexist within a single product.
The problem is that an FTO analysis is not an exercise in examining every technical attribute of a product. The purpose of an FTO analysis is to identify potential patent infringement risks. Therefore, in order to determine which technical features of a product are legally relevant, it is first necessary to understand what the relevant patents actually protect.
Many people view an FTO analysis as a process that starts with the product and then moves toward the patents. In practice, however, the analysis often proceeds in the opposite direction. No matter how closely one examines a product, it can be difficult to determine which of its technical features are legally significant. Instead, it is often necessary to first examine what technical features are protected by currently valid and enforceable patents. Only then can the analyst determine which aspects of the product deserve particular attention.
In this sense, an FTO analysis is less a product-centered exercise than a patent-centered one.
A patent is not merely a document that describes a technology. A patent divides and categorizes the technological landscape in a particular way. One patent may view a product from the perspective of its communication functions, while another may focus on its control architecture. Yet another may focus on the data processing process or the manner in which a user provides input. Each patent offers a particular perspective through which the product can be viewed.
Accordingly, an FTO analyst does not view the product simply as it is. Instead, the analyst views the product through the lens provided by each patent. When one patent is examined, the product may appear to be a system having a particular inventive structure; when another patent is examined, the same product may appear to be an object having an entirely different technical structure. The product itself has not changed, but the framework through which it is viewed has changed.
As this experience accumulates, an interesting realization emerges. The analyst comes to understand the product through the patents. Yet the product understood through this process is not the same as the product initially presented. Each patent brings a different aspect of the product into focus, and, as a result, the technical significance of the product is newly defined. Ultimately, the product as understood by the analyst is a product reconstructed through the lens of the patents.
In this respect, patents are like a network of nets. Numerous patents form different kinds of nets across the technological landscape. The analyst is not merely looking at the product itself; rather, the analyst is determining which nets the product may become entangled in. In other words, the analyst examines whether particular technical features of the product fall within the scope of protection of any given patent.
What is important is that, by the time an FTO analysis is conducted, these nets have already been cast. Numerous patents have already divided and defined the technological landscape, and the analyst comes to understand the product within that existing structure. Thus, the legal significance of a product does not arise solely from the product itself. Rather, it is shaped within the framework of the patent system that exists at that time.
Ultimately, an FTO analysis is not simply an exercise in comparing a product with patents. It is the process of positioning the product within the technological landscape defined by existing patents. The analyst does not treat the product as a fixed and isolated object. Instead, the product is reconstructed and reinterpreted through the various technical perspectives presented by the patents.
We often think of the product as the starting point of an FTO analysis. In practice, the analysis does begin with the product. However, the legal significance of the product does not come from the product itself. The analyst views the product through the lens of existing patents, and it is through this process that the legal significance of the product ultimately comes into focus.
Source: The Law Times (Beobryul Shinmun)
(https://www.lawtimes.co.kr/news/articleView.html?idxno=221766)