Juhyun Ahn, Patent attorney (LEE & MOCK IP)
An FTO (Freedom to Operate) analysis is a process of assessing, in advance, whether the commercialization of a particular product or service (hereinafter collectively referred to as a “product”) may pose a risk of infringing the patent rights of others. In many cases, the difficulty of an FTO analysis is simplistically understood as lying in identifying the key patents of concern among the vast number of patents uncovered through a search. However, the more fundamental difficulty lies elsewhere.
In an FTO analysis, what we compare is a product and the patents of others. At first glance, this may appear to be a simple exercise of comparing two things. In practice, however, the analysis is far more complex. A product exists as a physical object, whereas a patent describes technology through a limited linguistic expression, namely, its claims. Of course, insofar as we think in terms of language, a physical object is also understood through language. Yet a patent does not capture the physical object in its entirety; rather, it captures only certain aspects of it in the form of particular technical concepts. An FTO analysis can therefore be understood as the process of identifying the correspondence between a product that exists as a physical object and a patent that is expressed in language.
Although a developed product exists as a physical object, we do not deal with the physical object as a whole even during the development process. Developers understand and design a product by breaking it down into functions, structures, components, control methods, and other aspects. Product specifications and design documents likewise do not represent the physical object itself. Rather, they constitute a system of technical representations in which the physical object has been reconstructed in language from a particular perspective adopted by the developer.
A patent, too, does not directly deal with the product itself. A patent defines the scope of its protection based on the linguistic expressions used to describe the technology. The scope of protection is not established with respect to the product as a whole, but only with respect to certain technical concepts captured in language.
Determining infringement is not simply a matter of comparing a product with a patent. It is a process of comparing the invention defined by the claims with the corresponding technology implemented in the product. However, the product being analyzed is not initially presented to us in such units of invention. Accordingly, the central challenge of an FTO analysis lies in determining how to identify, within the product, the technical subject matter corresponding to the invention defined by a patent's claims.
Of course, this problem is not unique to FTO analyses. In patent infringement litigation as well, courts must determine the relationship between the language of a patent and a physical product. The gap between the language of a patent and a physical object can be regarded as an inherent issue in the assessment of patent infringement generally.
An FTO analysis, however, confronts this gap more directly because it is conducted at a stage when it is not yet clear which patents, if any, may actually present a risk. In patent infringement litigation, the product can be interpreted according to the inventive unit presented by a patent that has already been identified as being at issue. In an FTO analysis, by contrast, the analyst often has to reconstruct the product from various technical perspectives while exploring which patents may potentially pose a problem. Even the same product may be understood as an entirely different technical subject depending on which patent is used as the lens through which it is viewed.
The difficulty of an FTO analysis, however, does not end with the need to reconstruct a product from various perspectives. The conceptual frameworks through which technology is understood and described also change over time.
In emerging technological fields, not only has sufficient research and development yet to accumulate, but the conceptual frameworks and terminology used to describe the technology may also remain unsettled. As a result, early patents often appear, from today's perspective, to have been drafted on the basis of relatively broad and abstract technical concepts. Accordingly, in an FTO analysis, a product may be interpreted from a technical perspective that the developer had never considered, with the result that certain technical subject matter embodied in the product may fall within the scope of the claims of an early patent.
As a technology matures, the concepts and terminology used to describe it also become more refined and differentiated, and patents are increasingly filed in more specific and granular forms. In this sense, technological development does not simply mean the advancement of physical products or systems. It is also a process through which the conceptual and linguistic framework used to understand technology becomes increasingly sophisticated. This evolution, in turn, affects how an analyst understands a product.
The analyst is not confronted solely with today's conceptual framework. Without understanding the technological context and conceptual framework that existed at the time a patent was drafted, it can be difficult to properly determine what the patent was actually intended to capture. Accordingly, an analyst must be able to understand the present-day product not only through today's conceptual framework but, where necessary, also within the conceptual framework of the era in which the patent was drafted.
Ultimately, an FTO analyst must reinterpret the same product according to the technological context and conceptual framework of each patent identified during the analysis. The subject matter being compared with the patents is therefore not limited to a preselected set of “technical attributes of the product.” Rather, it encompasses all technical attributes of the product that can be captured and expressed in language.
To read a product not through the language of its developer, but through the language of patents—and, ultimately, through the conceptual framework of the era in which those patents were drafted. That is what makes an FTO analysis difficult.
An FTO analysis is an interpretive process conducted across the gap between a product and a patent, and also across the gap between the conceptual frameworks of the present and the past.
Source: The Law Times (Beobryul Shinmun)
(https://www.lawtimes.co.kr/news/articleView.html?idxno=222331)