table of contents
What is an FTO search for designs?
A design FTO (Freedom To Operate) search is an investigation conducted to confirm whether a company's product design infringes the design rights of others.
Also known as a "clearance investigation" or "pre-infringement investigation," it is typically conducted before a new product is brought to market.
If you manufacture and sell a product without checking the design rights of others, you may be subject to a warning letter or lawsuit on the grounds that your design infringes on the design rights of others. In such cases, you may need to respond to the lawsuit, as well as take measures such as recalling the product or making design changes, which could result in significant damages (in terms of time and financial costs).
Therefore, when developing a new product, it is important to not only file a design application but also to conduct a preliminary design search (FTO search).
By checking the rights status of other companies before development and sales, you can prevent the risk of infringement by modifying the design, etc.
Investigation procedure
(1) Identification of the target design
Please provide us with the completed renderings, 3D data, rendering images, etc. of your company's products to be surveyed.
In addition, please explain the design's distinctive features, the elements you have devised, and whether or not you have used any existing designs as reference, as this will help improve the accuracy of our research.
(2) Search for prior registered designs
We use databases provided by the Japan Patent Office (such as J-PlatPat) to extract prior designs that may be problematic.
In this case, not only the company's product itself but also its component parts may be subject to the patent, because if the component design falls within the scope of the rights of another company's registered design, a "relationship of use" will be established, and the company may be subject to injunctions and compensation for damages.
We also check the existence of rights for the extracted prior designs. In principle, if the design right has expired due to non-payment of pensions, etc., there is no risk of an injunction being filed, but there remains the possibility that liability for damages may arise for past infringements.
(3) Judgment of similarity (comparative examination)
We compare the extracted prior designs with our own designs and comprehensively consider the similarity of the products and shapes.
(4) Risk assessment
The relationship with each prior registered design is classified into "high risk," "medium risk," or "low risk" according to the likelihood of conflict and the degree of impact.
Depending on the level of risk, we will consider the following measures:
- Design changes (changes in shape and configuration)
- License negotiations
- Invalidation investigation (examination of the possibility of invalidation trials)
Points to note when conducting an investigation
partial design
Recently, the number of partial design registrations has been increasing, and infringement can occur even if only a part of the design is similar, rather than the entire design.
Part Design
Even if the products are different as a whole, parts and components that are visible from the outside, such as car bumpers and lights, are subject to investigation. If these have a registered design (part design) of another party, a relationship of use may arise and constitute infringement.
Additionally, even if a part is not visible from the outside, it may become a problem if it is visible during distribution.
Duration of design
The duration of a design right is:
Applications filed on or after April 1, 2007: 20 years Applications filed on or after April 1, 2020: 25 years |
Therefore, it is advisable to investigate prior registered designs for at least the past 20 years.
Regionality of design rights
Design rights are established independently in each country under the territorial principle.
Therefore, if you are planning to expand into overseas markets, you must check the design registration status in each country or region.
Our services
Our firm employs patent attorneys specializing in design patents, who conduct specialized infringement prevention investigations.
If necessary, we will prepare and provide a "written opinion on the possibility of design right infringement," which will include a determination of similarity as well as an examination of the possibility of invalidity.
For details, please also refer to the page "Preparation of Written Opinions Regarding Determination of Similarity of Designs."
