This patent strategy can save you from paying huge Royalties

Planning to launch a new product and concerned about the huge IP prevailing in the domain? Does the thought of accidentally Designing/producing an infringing product ever bother you? 

Well, if you’ve found yourself caught up in similar situations, this article can help you. Just like you, our clients often find themselves in this bothersome pit. And while working on similar cases we developed a different perspective on how you can utilize FTOs. 

Allow me to share an example from my past experiences where we help our client in the designing/production phase to successfully launch a non-infringing product. And who knows you might find something that takes away all your concerns forever! 😉

So without further ado, let’s start with Mike’s story.

We received an FTO search request from Mike for a design of a face mask. The feature under focus was related to the filtration technique as well as optimizing the number of clothes to be used. 

Please note: The product disclosure shared here is obviously different from what we actually worked on. Regardless, you’ll see the impact it created. We respect the confidentiality of our clients and strictly avoid sharing such sensitive information with anyone.

Coming back to the case, I started with the initial search.

When I started, I observed a plethora of patents in the domain. Some of them even seemed to be directly related to the same design which Mike and the team were aiming for. After around 30% of the search was completed, I sent an interim update and proposed a call. Like we usually do in most of our cases. 

When I was sharing my observations in the call, I read the disappointment on Mike’s face. They had been planning to launch the product in the market and wanted to solve particular problems related to face masks. However, in the current scenario, they would have needed to hold the product OR take a license and pay royalties to the patent owners which is not what they were looking for.

I sensed some uncomfortableness so I asked Mike about the Development stage of the product. I was curious to know if the design is finalized or it is still in the planning stage? 

He said that they were still in the initial stages and wanted to get the search done before they could work towards finalizing the design.

“Be like Mike”, I thought and smirked as I pictured a stick-figure Mike. 

I immediately proposed an alternative solution to Mike: What if we can identify the abandoned/dead patents which are solving similar problems and offering the similar advantages that we are looking here? In that way, we can use those designs to achieve the same objective without paying royalties to anyone. Mike liked this idea and gave us the green signal.

And thus we commenced our Search

After the call, I went back and searched through the abandoned/dead patents in the domain and was able to identify 4-5 very relevant patents. I did not stop there, we made a proper analysis of these patents before consulting the client. I checked the actual products made by the owner of those patents including their pros and cons. 

Based on all the analysis, I then presented the recommendations with some solid support from the patent search along with the market research.


Detailed Analysis of the patent

Mike liked this analysis and his team worked around our solution to come up with a new non-infringing design. Since not much of the design modifications were necessary, it resulted in a cut down in R&D costs. 

We saw an opportunity and we jumped on it because we knew we could make a perfect landing.


If you’re planning to launch a product, here are a few things you should do:

  1. Prefer to conduct the freedom to operate or clearance search in the very initial stage of product development.
  2. Include expired and abandoned patents in your clearance search 
  3. Don’t give up on your product

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Authored by: Prabhanjan Mishra, Search team

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