Patently Enabled May 2025 – Patentability and Freedom to Operate Are Not the Same

Key Takeaways

• Patentability addresses whether an invention can be patented, not whether it can be practiced.
• A patent provides a right to exclude, not an affirmative right to bring a product to market.
• A freedom to operate (FTO) study evaluates the risk of infringing existing patents when commercializing a product.
• Patentable inventions are usually just a small part of a product, and a product may be both patented and infringing.
• Understanding the distinction between patentability and FTO is critical to managing intellectual property risk.

Patentability is the question of whether your invention can be patented. Once you obtain a patent, you are not receiving a right to practice your invention; you are provided a right to prevent others from practicing your invention, often referred to as the right to exclude.

If you want to practice your invention, a freedom to operate (FTO) study assesses the risk of patent infringement if your product is brought to market. Patentable inventions are usually just a small part of a product. A product may incorporate many components, features, or processes, some of which may be covered by patents owned by others.

Your patent application’s filing date will help determine whether you can get a patent from the U.S. Patent and Trademark Office. The Office cannot determine that your invention is not patentable based on inventions or other information that arise after your filing date. However, all the information available prior to your filing date can block the granting of your patent application claims. Although every bit of public knowledge can be applied against your application claims, the claims need only one new nonobvious feature to qualify for patentability.

The filing date is also relevant for FTO analysis. For the most part, patents granted after your filing date cannot be infringed by a product as shown in the patent application. Earlier-issued patents, however, remain highly relevant and must be considered when assessing infringement risk.

Even if just a single patent claim covers your product, the patent holder can prevent you from making, using, selling, or offering the product for sale. For a product to be covered, that is, to infringe, each and every requirement in a claim must map directly or as an equivalent to an element or feature in the product. If a single element among all the claims is missing from the product and has no equivalent, the product will not infringe that patent. An FTO study includes such an analysis of the relevant patents.

Typically, patent applications are published. Upon publication, all of the disclosure becomes available as prior art to subsequent patent applications. Hence, a patent application may even block the granting of a subsequent patent application. In other words, a patent application publication can block patenting by another. Thus, there are defensive aspects that create significant motivation to file a patent application.

It is not uncommon to have a product that is both covered by a patent and potentially infringing another party’s patent. A classic example is to consider two patent holders, one who owns a patent for a stool and another who owns a patent for a chair. In this hypothetical situation, the “chair” is just a back support attached to a stool. The person wanting to sell the chair might have a patent covering the improvement to the stool, but that person would still need a license to the stool patent in order to sell chairs on the market.

This type of infringement highlights why patents are referred to as exclusionary rights. A patent allows one to prevent others from making, using, selling, and offering the patented product for sale. Patents do not confer an affirmative right to bring your product to market even if it is covered by your patent.