Running a Freedom-to-Operate Analysis: A Practitioner's Guide to Searching, Claim Charts, and Written Opinions
By Casey Scott McKay ·
This guide runs a freedom-to-operate analysis end to end, in fifteen stages, from the scoping conversation that determines the cost to the report that an engineer can act on. It covers feature decomposition and why searching the product rather than the features is the most common budget failure, how to screen hits so that most resolve for free, how to chart element by element with an engineer in the room, why the file wrapper is the cheapest source of leverage in the exercise, how to build a design-around that survives the doctrine of equivalents, and when a written opinion is worth its cost in privilege. It covers the report, the privilege handling, the contractual allocation of residual risk, and the refresh cycle. Worked language runs throughout. The companion article explains what the analysis can and cannot establish and the companion checklist is the box-by-box form.
IP and Technology > Patent Counseling Transactions | Guide | Published 24 January 2024 - Updated 22 July 2025 | Casey Scott McKay - marksy.us
Summary. This guide runs a freedom-to-operate analysis end to end, in fifteen stages, from the scoping conversation that determines the cost to the report that an engineer can act on. It covers feature decomposition and why searching the product rather than the features is the most common budget failure, how to screen hits so that most resolve for free, how to chart element by element with an engineer in the room, why the file wrapper is the cheapest source of leverage in the exercise, how to build a design-around that survives the doctrine of equivalents, and when a written opinion is worth its cost in privilege. It covers the report, the privilege handling, the contractual allocation of residual risk, and the refresh cycle. Worked language runs throughout. The companion article explains what the analysis can and cannot establish and the companion checklist is the box-by-box form.
Keywords: freedom to operate, FTO analysis, patent search, claim chart, non-infringement opinion, invalidity opinion, design around, willfulness, privilege, scope definition, feature decomposition, jurisdiction selection, file wrapper review, prosecution history estoppel, continuation risk, supplier indemnity, product launch, opinion counsel, risk assessment, patent landscape
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