In China, with the number of patent infringement (including invention, utility model, design) increasing year by year, to avoid risk of infringement, more and more enterprises choose to conduct FTO (Free to Operate) search and analysis on the possible patent infringement risk of products before launching them into the market. In Southeast Asian countries, although the battle for patents has not been so fierce, enterprises with increasing risk awareness are also inclined to conduct FTO search and analysis before launching their products into the market to avoid possible patent infringement risks. From a practical point of view, this paper will discuss several key points that should be paid attention to when conducting FTO search and analysis in China and Southeast Asian countries.
Generally speaking, FTO search and analysis can be done in three steps, patent search, patent screening, and then infringement analysis.
1. Patent Search
For patent search, the most important thing is to do the search comprehensively and avoid any omission. To avoid omission, ascertaining search elements (key words) and selecting database are two key points.
(1) Ascertaining search elements (Key words)
A product may include many technical points. To determine which technical points the FTO search is aimed at, it is necessary to know the background of the product industry, eliminate unnecessary technical points which obviously belong to the prior arts, and focus on more innovative key technical points for the search. After determining the technical points of search, we need to have a deep understanding of the technical point in order to reasonably ascertain the search elements (key words) and determine the search strategy. If the search elements (key words) deviate, it will lead to the deviation of the search results or even no practical reference value. Therefore, before conducting the search, we should fully understand the technology and reasonably determine the search elements (key words) that best reflect the technical points.
(2) About databases
As far as China is concerned, it is well known that the number of patent applications in China is extremely large. In recent years, more than 3 million applications have been filed every year. Therefore, it is very important to select a powerful database for FTO search. At present, the best database is internal database of the Patent Office. Regretfully, the Patent Office does not provide infringement search services. As for commercial databases, Soopat and Patsnap are also options to be considered.
As for Southeast Asian countries, Indonesia and Vietnam deserve special attention. There is no commercial database available in Indonesia. The official database, namely the official website of the Indonesian Patent Office, contains only titles and abstracts, without claims and specifications, which results in the lack of sufficient reliability of FTO search. Currently, there is no particularly good solution to this problem. The clumsy way is to go to the Indonesian Patent Office to read the paper bulletin, but obviously this method is not easy to operate. Besides, it is considerable to put more efforts on search techniques, such as referring to the search results of other countries, focusing on key patentees and so on, which can make up for the shortcomings of incomplete data to a certain extent. In addition, Vietnam's problem is that official databases are often inaccessible online, which leads to an unlimited extension of search time. Therefore, it had better give more sufficient time margin in the process of FTO search in Vietnam, in order to avoid affecting pre-scheduled marketing of the products due to delay of the patent search.
2. Patent Screening
When the patent search is completed, the detected patents need to be screened, and the patents related to the product (including patent applications) should be placed in the target of attention, while excluding the patents not related to the product.
The biggest difficulty of screening is how not to omit but the screened targets will not be too large to submerge the targets that really need attention. Especially, in the case of a large number of patents, how to achieve accurate screening is a big problem in the screening process. So, if budget permits, it is considerable to entrust multiple law firms to search and screen back-to-back at the same time.
3. Infringement Analysis
When completing patent search and patent screening, it is necessary to perform detailed infringement analysis of patents (including patent applications) listed in the target of interest. Specifically, it is necessary to compare the technical features of the claims and determine whether the products fall into the scope of patent claims.
To judge whether a product falls into the scope of patent protection, it is necessary to synthesize various factors to avoid misjudgment. For example, in China, the principle of Full features should be complied and the doctrine of equivalence should also be considered. In addition, in specific patents, it may also involve the relevant judgment principles of Usage Condition feature and functional wording limitations. Similarly, in other Southeast Asian countries, it is necessary to make a comprehensive judgment on how to interpret the technical features defined in the claims and how to determine the scope of patent protection, etc.
4. The Choice of Attorney
From the perspective of FTO implementation, we need to consider the above 1-3 aspects. However, in any case, the level of the entrusted lawyer's professional ability and its degree of practical experience in FTO search and analysis will affect the results of FTO search and analysis. Therefore, either in China or in Southeast Asian countries, it is important to carefully choose and ultimately select experienced attorneys (firms).
Compared with the search and screening stage, infringement analysis requests the lawyer's professional capability more. Therefore, when choosing attorneys, the clients should consider not only attorneys' experience in patent search and screening, but also their experience in infringement lawsuits. In the determination of infringement, lawyers with abundant experience in patent infringement litigation are more reliable and closer to the judges’ opinions than lawyers without experience in litigation or patent agents acting solely for patent prosecution. For example, the concept of Usage Condition Feature first appeared in the case represented by P.C. & Associates. The lawyers of P.C. & Associates, having a deeper understanding of the usage condition features, are more reliable in making relevant determination.
In fact, with the rapid increase of patent applications and patent infringement cases in China, the ranks of patent agents and patent lawyers in China are also growing rapidly, among which, it is inevitable that many law firms have their own strengths. When choosing attorneys, the clients need to choose the appropriate attorneys according to the objective reality of the technical field and comprehensive consideration from different aspects.
In Southeast Asian countries, the number of patent infringement litigation cases is generally very small, and few lawyers have patent infringement litigation experience. In this situation, the lack of litigation experience will inevitably affect their determination of patent infringement to a certain extent. In this regard, the alternative solution is to entrust experienced intermediary lawyers, who can make multi-angle inspection, strict supervision and comprehensive judgment.
To sum up, from a practical point of view, FTO search and analysis in China and/or Southeast Asia needs to take into account the practical experience and professional level of attorneys. In terms of specific patent search, patent screening and infringement analysis, attention should be paid to reasonably determining the search elements (key words), selecting the appropriate database, avoiding the omission in search, and comprehensively judging the infringement risk. FTO looks easy but difficult to operate accurately. To do a good job needs the joint efforts of clients and their attorneys.