Patentability Search vs. Freedom-to-Operate Analysis: What Is the Difference?

A freedom-to-operate (FTO) analysis is a search that assesses whether making, selling or importing a product in a particular country would infringe someone else's patent in force. A patentability search, by contrast, answers the question "Is my invention new, can I get a patent?" Although both questions are asked in the same databases, their scope, the documents they look at and their results are different; a favorable result in one does not replace the other.

The most common misconception is this: "We have a patent, so we can sell the product freely." In fact, your own patent only gives you the right to exclude others; it does not free your own use against someone else's earlier patent. Below we look at the three types of search, how they differ, the limits of free tools and the options available to you after the analysis.

Three Questions, Three Separate Searches

The three searches commonly used in the patent field answer three different questions. That is why two searches run in the same database produce different result lists: in a patentability search, a patent that lapsed 30 years ago may be the most important document, while in a freedom-to-operate analysis it is of no importance at all. The comparison can be summarized as follows:

The Patentability Search

A patentability search tests, before filing, whether the invention involves novelty and an inventive step. Under Art. 83(2) of Industrial Property Law No. 6769 (SMK), the state of the art covers everything made available to the public anywhere in the world before the filing date. That is why the status of a document is irrelevant in a patentability search: a patent that expired 40 years ago, a thesis, a product catalog or a promotional video can also destroy novelty.

A patentability search should not be limited to patent documents. Academic papers, standards documents, product manuals and competitors' promotional materials are also part of the state of the art and may come up against you in examination.

The real value of a good patentability search is that it shapes the application. Once the closest documents are known, the claims are drafted to focus on the features that set the invention apart from them. After filing, however, no new features can be added to the description; the application cannot be amended beyond the content of the application as filed (Art. 103(1)).

A patentability search has a natural blind spot: as a rule, applications are published once 18 months have passed from the filing or priority date (Art. 97(1)), and unpublished applications cannot be inspected by third parties (Art. 102(1)). Most applications filed in the last 18 months therefore do not show up in any search; moreover, the original contents of national applications with an earlier date that are published later also become part of the state of the art for novelty purposes (Art. 83(3)).

Why Doesn't the TÜRKPATENT Search Report Replace a Patentability Search?

The search report of TÜRKPATENT (Turkish Patent and Trademark Office) is an official report prepared after filing, at the applicant's request and upon payment of a fee. The search request is made together with the application or within 12 months of the filing date; the report is notified to the applicant and published in the Bulletin (Art. 96(1)–(2)).

The report is valuable, but its timing keeps it from being a patentability search. By the time the report arrives, the description has long since been filed; you can narrow the claims in response to an unfavorable finding, but you cannot add a feature that is not written in the application. We explained all the steps of the application process and the statutory deadlines in our patent application guide.

What Does a Freedom-to-Operate Analysis Look At?

A freedom-to-operate analysis looks not at the past but at the present and at the target market. Patents are territorial: if you will make a product in Turkey and sell it in Germany, the two countries must be examined separately. For Turkey, in addition to Turkish patents and utility models, European patents that designate Turkey and have been validated in Turkey are also on the list.

Claims are at the heart of the analysis. Under SMK Art. 89(1), the scope of protection is determined by the claims; the description and drawings are used only for interpretation. There is no infringement merely because a patent's title or abstract resembles your product; what matters is whether your product has all of the elements in a claim. Note: an element that performs the same function in the same way and produces the same result as an element in a claim can be regarded as an equivalent (Art. 89(5)). A small differentiation is therefore not always enough.

Checking status is also part of the analysis:

• Term: A patent is protected for 20 years and a utility model for 10 years from the filing date (Art. 101(1)).
• Annual fee: A patent whose fee is not paid lapses; however, it can be reinstated if the reinstatement fee is paid within 2 months of the notification of lapse (Art. 101(4)). The court determines the rights of third parties who acquired rights in the meantime (Art. 101(5)).
• Pending applications: A published application gives its owner provisional protection (Art. 97(4)); it should be monitored because its claims may change during examination.
• Patent family: Applications filed in different countries for the same invention show in which markets there is a risk.

A patent family is a group of applications that cover the same or similar technical content and are linked to one another through priority claims. The EPO builds families automatically on the basis of priority claims and shows two types: the narrow (DOCDB) family, which covers the same technical content, and the broader (INPADOC) family. In an analysis, the family view is the fastest way to find the counterparts in the target countries starting from a single document; however, the claims in each country must be examined separately, because the claims of patents in the same family may have been granted in different forms from country to country.

Acts that constitute infringement are not limited to manufacturing; selling, importing and possessing an infringing product for commercial purposes and using a patented process are also forms of infringement (Art. 141(1)). The analysis should therefore cover not only the final product but also the process you use in production and the parts you buy from suppliers. A supplier saying "our part is patented" does not mean that the part does not infringe someone else's patent; the supplier's IP warranty and liability should be addressed separately in the supply agreement.

A Freedom-to-Operate Analysis Step by Step

A sound analysis starts with a definition of the product before any searching:

1. Break the product down into its elements: Write down the product's technical features, materials and processes item by item; the analysis will compare the claims against this list.
2. Identify the countries and acts: Clarify in which countries production, sales, import and export will take place.
3. Search: Screen by keyword, classification code, known competitor and manufacturer names, and patent family.
4. Filter: Set aside documents that have expired, are not valid in the target country or are off-topic; note the possibility that lapsed patents may be reinstated.
5. Compare the claims: Prepare a table mapping the independent claims of each remaining patent, element by element, to the product's features.
6. Document the result: Put the search date, the databases used and the decisions in writing; the analysis reflects the situation as of that date.

Options If the Analysis Flags a Risk

Finding a risky patent is not the end of the road. The main options are:

1. Design change (design-around): The product is redesigned so that it does not have one of the elements of the claim; the risk of equivalence is assessed separately.
2. License or purchase: Permission to use the patent, or the patent itself, is obtained from the patent owner.
3. Opposition and invalidation: An opposition can be filed with the Office within 6 months of publication of the grant decision in the Bulletin (Art. 99(1)); after that period, invalidation on grounds such as lack of novelty is sought from the court (Art. 138(1)).
4. Declaratory route: An interested person can ask the right holder for its opinion on whether their activity constitutes infringement; if no reply is received within one month or the reply is not accepted, they can bring an action for a declaration that there is no infringement (Art. 154(1)).
5. Waiting or changing the market: If the patent is close to expiry, the outcome of a pending application is uncertain, or the patent is valid only in certain countries, the timeline or market is re-planned.

Do not treat your own patent as a defensive tool. In an infringement action brought by the owner of an earlier patent, you cannot rely on your own industrial property right as a defense (Art. 155(1)); if your development is dependent on the earlier patent, you cannot use it without its owner's permission (Art. 131(1)).

Landscape Analysis: A Map, Not a Legal Opinion

A patent landscape analysis is a statistical map showing who has filed how many applications, in which countries and in which years, in a technology field. It is used to set the direction of R&D, to get to know competitors and potential business partners, or to spot areas left open. Because it does not interpret individual claims, it answers neither the novelty question nor the infringement question. Still, it provides a good starting list for both searches: companies filing heavily in the field are the names to examine first in a freedom-to-operate analysis. An area that looks empty on the map, on the other hand, is empty only in the patent documents; because there may be papers, products or unpublished applications in that area, it does not by itself tell you anything about patentability.

What Free Databases Can and Cannot Do

You can carry out a first screening yourself. The EPO's Espacenet database provides free access to more than 150 million patent documents from around the world, from 1782 to the present; it is updated daily, offers machine translation and contains information that helps you understand whether a patent has been granted and whether it is in force. WIPO's PATENTSCOPE database provides international PCT applications in full text on the day of publication, together with documents from participating national and regional offices; it allows searching by criteria such as keyword, IPC class and chemical structure, and translation with WIPO Translate. For the current legal status in Turkey, TÜRKPATENT records are the reference.

What these tools cannot do is interpret. They do not compare a claim with your product element by element, they do not assess equivalence, and they do not ensure that legal status information is up to date. To catch documents that use different terminology, searches should be run with classification codes in addition to keywords.

Which Search, When, in the Product Life Cycle?

1. Concept stage: A landscape analysis maps out the field.
2. Prototype, before filing: A patentability search is carried out, and the results are reflected in the claims. Take care not to make the invention public during this period; we covered the risks in our article on the consequences of disclosing an invention before filing.
3. Before the design is frozen: The first freedom-to-operate analysis is carried out; changes are still cheap.
4. Before production, import or a new market: The analysis is updated for the target countries.
5. Investment or sale of the company: The portfolio and risks are reviewed as a whole; for this review, see our guide to IP due diligence when acquiring a company.

Fictional Example: Tarlan Tarım Makineleri

Fictional example: Tarlan Tarım Makineleri is developing a new seed distributor and plans to manufacture the product in Turkey and export it to Romania. The patentability search turns up a Japanese patent that describes a similar mechanism and expired in 2003; the company focuses its claims on the adjustment system that sets it apart from this document. The freedom-to-operate analysis, meanwhile, shows that one of the claims of a European patent in force covering Romania covers the distributor plate. There is no counterpart of this patent in Turkey. The company changes the plate geometry for the Romanian market and, after also commissioning an equivalence assessment, keeps its export schedule on track.

Limits and Common Mistakes

No search provides certainty; unpublished applications, gaps in databases and differences in claim interpretation always leave a residual risk. The purpose of a search is not to eliminate risk but to make decisions with the risk known. When reading an analysis report, check which countries and documents published up to what date were searched, which version of the product was used as the basis and on what assumptions the conclusion was reached. When the product changes or a new market is added, the report does not update itself. Common mistakes:

• Considering a freedom-to-operate analysis unnecessary because the company has its own patent.
• Looking only at Turkey and skipping export markets.
• Reading the title and abstract without examining the claims.
• Reusing an analysis from a year ago without checking the outcome of pending applications.
• Carrying the logic of a trademark search over to patents: we explained the similarity assessment on the trademark side in our article on trademark search reports; for patents, the yardstick is the claims.

To distinguish which risk a patent, utility model or design covers, you can also review the differences between the four industrial property rights. At Webx, in our patent registration work we treat the patentability search as part of the application, and if your product is going into a new market, we discuss the freedom-to-operate question separately.

Sources

• Legislation Information System — Industrial Property Law No. 6769 (SMK) (Arts. 83, 89, 96, 97, 99, 101, 102, 131, 138, 141, 154, 155)
• EPO — Espacenet: patent search (coverage, free access, legal status information)
• WIPO — PATENTSCOPE (PCT applications and national collections)
• EPO — Patent families (the concept of a patent family)