Structuring Freedom to Operate Opinions: Reducing Risk of Patent Infringement

Combating Troubling FTO Results, Overcoming Potential Roadblocks, Addressing Impact of Post-Grant Process on FTO Opinions

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, December 8, 2020

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will guide patent counsel preparing freedom to operate (FTO) opinions for companies developing new products. The panel will outline best practices for drafting FTO opinions to reduce infringement risks.


FTO searching and analysis is a critical component in the development of a product. Counsel must prepare product inventors to document information for sound decisions regarding whether they have the FTO in a particular patent area.

The Supreme Court underscored the importance of FTO opinions in its decision in Commil USA v. Cisco Sys. Companies should work with counsel to develop an FTO opinion before proceeding with research, development, and commercialization of a product to minimize the risk of infringing another's IP rights.

Patent counsel should establish and implement FTO search and analysis strategies to uncover enforceable patents that may prove to be a roadblock for the development and marketing of a product. Further, counsel should anticipate and prepare to respond to post-grant validity challenges and their potential impact on FTO analysis.

Listen as our authoritative panel of patent attorneys discusses best practices when drafting FTO opinions for companies planning to develop new products. The panel will discuss the impact of post-grant challenges and strategies for employing FTO opinions.



  1. The value of FTO opinions
    1. Legal and business benefits
    2. Use of advice of counsel in litigation defense
    3. Privilege and confidentiality
  2. Strategies for drafting and developing FTO opinions
    1. When should FTO opinions be prepared?
    2. Who are the audiences for an FTO opinion?
    3. How should an FTO opinion be structured?
    4. Avoiding common mistakes
    5. Alternative resolutions
  3. Relation of post-grant proceedings to FTO opinions


The panel will review these and other crucial issues:

  • What are best practices for patent counsel when analyzing FTO issues and structuring FTO opinions?
  • What is the impact of the post-grant process on FTO opinions?
  • When should counsel seek FTO opinions to protect new research and products from infringement claims?


Fleming, John
John M. Fleming

Banner Witcoff

Mr. Fleming concentrates on preparing and prosecuting utility and design patent applications in a variety of technical...  |  Read More

Zuege, Austen
Austen Zuege

Intellectual Property Attorney
Westman Champlin & Koehler

Mr. Zuege focuses his practice on intellectual property law in both transactional and litigation settings, including...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video