Patentability vs. Freedom to Operate

Industry expert Tony O’Lenick asks: What is the difference between "patentability" and  "freedom to operate"?

Like it or not, patents are playing a larger role in the life of the cosmetic chemist. As creations of the US Constitution, patents are important legal and marketing documents. One difficulty of patents lies in that they do not allow the holder to make, use or sell a product; they merely allow the patent holder to exclude others from making, using or selling a product that is covered by the claims of a valid patent. Consequently, one may find that they hold a patent on a product that cannot be made without infringing on someone else’s patent.

A patentability search can be conducted to determine if an invention is patentable; that is, if it complies with the statutory requirements of being: (a) useful, (b) novel and (c) unobvious. A patent is very specific to the material that is to be patented and includes all sources, patents and publications. For example, a silicone may exhibit properties a, b and c and be patentable, but its use may be limited in certain applications by other patents that describe its use.

A "freedom to operate" opinion, on the other hand, asks the question: Does the product that a manufacturer wishes to make, use or sell in the United States infringe on the claims of a valid US patent? Since this objective is to avoid infringing on an existing patent, the important part is limited to nonexpired patents. Expired patents are no longer enforceable and publications provide no patent rights.

Patents are part of Intellectual Property Law and can be complicated and confusing to many people. It is, therefore, important for the chemist to develop a working relationship with an attorney.

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