I have an invention in mind, but I don’t know if it can be protected by a patent.
I’ve launched my product to market, and I’ve received a claim for infringing third-party rights.
Is my product groundbreaking, or did someone already think of it?
These situations and doubts are not hypothetical. Every innovation manager has had to face them. These cases share some common ground, despite being different. All of them relate to patents, but they are addressed using different tools.
We’re talking about two concepts that can easily be confused: the patentability report and the Freedom to Operate (FTO) report. Both are based on patent analysis, but each serves a distinct purpose. If you’re considering protecting or marketing an innovation, understanding the difference is crucial to avoid costly mistakes or unexpected roadblocks.
What is a patentability report?
This report analyzes whether an invention is eligible to be patented. It checks whether the invention meets the three key patentability requirements under Spanish and European law:
- Novelty.
- Inventive step.
- Industrial applicability.
By searching patent databases and technical literature, the report determines whether prior art could affect the granting of a future patent. Its goal is to assess whether starting a patent application process is worthwhile, determine which technical solutions of the invention should be protected, and evaluate the chances of success.
This report includes an analysis of the invention/innovation, the accompanying data, and a search of the prior art. With all this work, it’s possible to evaluate whether the invention can be patented, or whether modifications are needed to achieve patentability. It’s also an effective tool to identify weak points in differentiation, give insights for further testing, or define early-stage protection strategies.
And what about the Freedom to Operate (FTO) report?
The Freedom to Operate report, on the other hand, analyzes whether it is legally safe to commercially exploit an invention without infringing existing third-party rights.
In other words, a product may be technically patentable and include inventive and novel features over prior art, but its commercialization might still infringe valid patents owned by others that protect elements also present in the product—even if the product includes extra features that could be patentable in themselves. In short, the FTO report’s purpose is to assess whether you can safely bring a product to market without facing legal issues later.
To perform an FTO, granted and in-force patents are reviewed in the countries where the product is expected to be marketed. It’s especially relevant in sectors such as pharmaceuticals, biotechnology, or electronics, where the number of active patents is very high.
We recently explored the FTO concept in more depth, so you can learn more [here].
The differences, in short
Conclusion
As seen, both reports are based on patent analysis, but they serve entirely different purposes. One protects innovation. The other minimizes legal risks. In many cases, both are essential for building a solid and surprise-free protection strategy.
If you’re developing a new product or technology, having proper guidance can save you time, money, and legal troubles. Need help? Get in touch with us.
