Two investigations, two different decisions
A patentability search supports the assessment of whether a particular invention can obtain patent protection. Freedom to operate, or FTO, examines the risk that a planned activity falls within someone else’s rights. A new improvement may still use a structure covered by an earlier patent. Grant is therefore not a clearance certificate for manufacturing or selling. WIPO frames FTO around what will be used, where and when. [1]
Our editorial proposal is to prepare two separate research briefs. The first identifies the proposed invention’s features and the date relevant to prior art. The second fixes the product version, supply chain activities and target countries. This distinction prevents a report about novelty from being used to answer a different business question about launching a product. It also makes the expected output clear before anyone starts collecting documents.
Prior art extends beyond patents that remain in force
In the European patent system, information publicly disclosed before the relevant date may belong to the prior art regardless of whether its author obtained a patent. Article 54 EPC covers different forms of disclosure and a special category of earlier applications published later. An academic paper, old catalogue or expired patent should therefore not automatically be excluded from a novelty search. [2]
We propose a search log recording the database, exact query, IPC or CPC symbols, date, results reviewed and reason for selecting each document. For every publication, preserve its availability date and the passage actually disclosing the feature. A list of similar titles does not establish what was disclosed. Mark unavailable full texts and translations needing verification separately. A later reader should be able to distinguish an observed disclosure from a working assumption.
The claim chart: connecting legal wording to a product feature
The claims determine the extent of protection of a European patent, with the description and drawings used for interpretation. An abstract, title or illustration can help locate a document but cannot replace this analysis. Identify the relevant claim version: the filed text, granted text and text amended after opposition may differ. [3]
Our editorial chart has five columns: claim reference, individual elements of its wording, corresponding product feature, technical evidence and interpretation questions. Instead of writing “similar”, point to a drawing, specification or test result. State uncertainty explicitly. A chart does not itself decide infringement: interpretation, possible equivalents and the applicable national law remain relevant. It is a way to organise analysis and expose gaps, rather than a machine that produces an automatic verdict.
Territory, status and the version that matters
A patent family helps locate related applications; it is not one uniform right operating identically everywhere. The European Patent Register records EPO proceedings and links to national registers. Effects after grant require checking the relevant entries rather than inferring the status of an entire family from a single screen. [4]
For a product manufactured in Poland, assembled in Czechia and sold in Germany, we propose a separate row for each activity and jurisdiction. Attach the check date, official supporting document and next review date. Buying a component abroad does not end questions about importation and subsequent use. Where a licence is relevant, record its territory, permitted activities, duration, sublicensing provisions and supply conditions rather than relying on a general assurance from a supplier.
Educational example: a sensor with a new calibration algorithm
Imagine a fictional team reducing measurement error through a new calibration method. Its patentability investigation concerns the method and its differences from earlier approaches. FTO also requires examining the device: optics, mounting, control and use. The calibration’s novelty does not resolve whether another component falls within someone else’s claims. This is an editorial example, not a client matter or an assertion that any specific device infringes.
When a relevant document emerges, the team can prepare a design alternative, explore licensing or obtain a deeper assessment of scope and validity. Each option needs its own evidence and date. Replacing a word in the documentation does not establish a technical change. A design note should state what changed physically or functionally, which tests were performed and which assumption in the earlier report no longer describes the product.
The publication gap and the need to update
European applications are generally published after eighteen months from filing or priority, although earlier publication is possible. Some applications are therefore not yet publicly visible when a search is conducted. “No document found” describes a search result, not proof that every possible right and future claim is absent. [5]
Our proposed final report identifies the product version, countries, date, databases, relevant documents, feature comparisons, status findings and unresolved questions. Agree on triggers for updating it: a design change, additional country, important publication or next release. This guide concerns patent analysis; it is not a complete review of trade marks, designs, copyright, sector permits or product safety. Those issues need their own scope and evidence.
Before accepting the report, hold a review with the designer and business decision maker. The designer confirms that the analysed version matches planned production. The decision maker checks markets and suppliers. Together they list missing information, such as a final component specification, licence or official status confirmation. The resulting acceptance record shows which findings can already support a decision and which remain conditional. Preserve that record so later changes can be compared with the actual assumptions of the investigation.
Sources and further reading
- 1WIPO, Identifying Inventions in the Public Domain (2020) ↗
WIPO Publication No. 1062; ISBN 978-92-805-3039-1
Modules I–V: the purpose and limitations of FTO. Editorial discussion, not a reproduction of the manual.
- 2European Patent Convention — Article 54 ↗
EPC, art. 54
Novelty and prior art; particularly paragraphs 2–3.
- 3European Patent Convention — Article 69 ↗
EPC, art. 69; Protocol on Interpretation
The extent of European patent protection; the law applicable to particular infringement issues still needs examination.
- 4EPO — European Patent Register ↗
Official EPO register
Procedural information and links to national registers; checked 18 October 2026.
- 5European Patent Convention — Article 93 ↗
EPC, art. 93
Publication of European patent applications; paragraphs 1–2.
Rekel Patent — an intellectual-property information website. Publisher: Vadym Rekel.