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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

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Conducted on Thursday, February 29, 2024

Recorded event now available

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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 and exposure to potential damages awards.


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

The Federal Circuit has emphasized the continuing relevance and importance of FTO opinions for avoiding enhanced damages in post-Halo cases. The Supreme Court also underscored the importance of non-infringement opinions as a defense to active inducement of infringement 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 or service to minimize the risk of infringing another's patent rights. Further, counsel should anticipate and prepare for potential post-grant validity or patentability 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. Legal framework for willful and induced patent infringement and advice of counsel defenses
    1. Statutes and major cases
    2. Privilege and waiver
  2. Comparison of different FTO strategies and actions
  3. Considerations for drafting and developing FTO opinions
  4. Post-grant proceedings and FTO


The panel will review these and other crucial issues:

  • What legal framework is used to assess a party's intent for willfulness/enhanced damages and inducement of infringement, and what aspects are still unsettled?
  • What are best practices for patent counsel when analyzing FTO issues and structuring FTO opinions?
  • When should counsel seek FTO opinions to protect new research and products from infringement claims?
  • What is the impact of the post-grant process on FTO opinions?


Balich, Jason
Jason W. Balich

Wolf, Greenfield & Sacks

Mr. Balich is a trial and appellate lawyer who protects clients’ technology and defends their freedom to use it....  |  Read More

Fasse, J. Peter
J. Peter Fasse

Fish & Richardson

Mr. Fasse’s practice emphasizes client counseling and patent prosecution in a wide variety of technologies, with...  |  Read More

Hamp, Eric
Eric J. Hamp

Banner Witcoff

Mr. Hamp assists clients in all aspects of intellectual property law, with a particular focus on the litigation and...  |  Read More

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