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 CLE webcast with Q&A

Conducted on Thursday, July 20, 2017
Recorded event now available

This CLE webinar will provide guidance to patent counsel preparing and providing 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 freedom to operate in a certain 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 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. Drafting FTO opinions
    1. Problem results
    2. Roadblocks
    3. Privilege and confidentiality
    4. Alternative resolutions
  2. Impact of the post-grant process on FTO opinions
  3. Strategies for employing FTO opinions


The panel will review these and other key 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?


Doris Johnson Hines, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Ms. Hines focuses her practice on patent litigation and has led teams in U.S. district courts, the U.S. International Trade Commission, and before arbitration panels. She has argued a number of cases before the U.S. Court of Appeals for the Federal Circuit. She regularly represents clients in mediations and assists in licensing negotiations. She advises clients on strategic patent prosecution, monetization strategies for issued patents, and patent damages, including issues relating to standard essential patents and fair, reasonable, and non-discriminatory (FRAND) terms.

Laura A. Labeots, Ph.D., J.D., Partner
Husch Blackwell, Chicago

Ms. Labeots’ legal practice focuses on patent procurement (drafting and prosecution); litigation; patentability, invalidity and infringement analyses; freedom-to-operate opinions; licensing agreements; appeals; and inter partes proceedings before the USPTO. Her practice is centered on the chemical arts, which stems from a combination of her masters and doctorate degrees in organic chemistry, and a decade of work as a research scientist at the bench.

Scott Larsen, Ph.D., Vice President, Intellectual Property
Incyte, Wilmington, Del.

Dr. Larsen has more than two decades of experience practicing IP law in the pharmaceutical industry. He manages all intellectual property matters at Incyte and is currently responsible for developing and executing a comprehensive global IP strategy including supervising patent and trademark prosecution, strategy and defense for Incyte’s commercial products and pipeline; conducting patentability, freedom to operate and due diligence analyses; managing Oppositions, PGR/IPR practice, and ANDA litigation; overseeing IP aspects of Incyte’s contracts and agreements; and counseling business development and licensing activities. Prior to joining Incyte, he was Patent Counsel at Wyeth; Group Director, IP at Cephalon Inc.; and Patent Counsel at BMS/DuPont Pharmaceuticals Company. 


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Vance Intellectual Property

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Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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