The EPO's Global Patent Index – fit for your FTO search

7 June 2021

Commercialising your product in a new market is a tricky process. You need to be careful not to infringe a competitor's patent on a similar technology as stepping on their toes can have painful consequences, potentially costing you thousands of euros.

The easiest way to avoid this is with a freedom-to-operate (FTO) search, which shows you in advance any third-party IP rights that could block your entry to the market.

FTO searches are complex. They rely on tools that provide not only advanced options for full-text searches but also comprehensive legal event data. You have crucial assessments to make for each document in the results list, such as: Is the right still in force? When was the last fee payment? Is the right due to expire or have any term extensions been granted? So the tools and databases you use need to make this process as effective as possible.

The EPO's Global Patent Index (GPI) is an excellent starting point for your FTO analysis. GPI lets you perform detailed searches in the EPO's worldwide bibliographic, legal event and full-text data sets. Thanks to some recent enhancements - such as searchable full texts for several countries in 2020 - GPI is ready to help you with your FTO search.

Seven reasons to include GPI in your FTO search strategy

1. Use the new full-text options - You can now search full texts from the following patent offices: DE, EP, ES, FR, GB and WO. This means GPI is particularly useful for FTO searches for major European markets.
2. Narrow your search to claims only - FTO searches look for potential IP rights infringements, so the claims are particularly relevant. As well as searching in the document as a whole, GPI lets you perform keyword searches in the claims only (search criterion CLAIM).
3. Search for particular legal events - GPI lets you narrow your search to certain legal events or event categories that could be particularly relevant for FTO searches, such as H ("IP right cessation") or G ("Protection beyond IP right term", e.g. SPCs).
4. Limit your search to one or more markets - Use criterion PUC to select the country you want to conquer with your product.
5. Search within specific time periods - Use criterion APD to select the filing date range.
6. Search for granted rights only - Criterion ISG ("Is granted") lets you limit your search to IP rights that are currently in force. While these documents are certainly important for your FTO search, pending applications likely to be granted in the near future may also become relevant and should not be neglected.
7. Keep an eye on new developments - After finalising your FTO search, you can use criterion DFE ("Date of first exchange") to spot new relevant documents regularly as part of your post-FTO monitoring.