first filing date or priority date in general – for any potential national phase patent applications filed or to be filed in the jurisdictions concerned. The patent documents identified by the searches should be analysed by a patent attorney or suitably qualified lawyer to assess if the subject product or service is considered to fall within the scope of any claims of the patent documents. An opinion on the potential infringement risk based on such analysis will then be produced. What are the most common obstacles or setbacks that IP attorneys like yourself encounter during this process? First, patent searching is by nature an inexact process and it is always difficult, if not impossible, to guarantee that any particular search is exhaustive of all potentially relevant documents. For example, patent applications are generally published 18 months after their filing or priority date, and we should therefore be mindful that a search will not be able to locate any applications which are not yet published at the time the search is carried out. A follow-up search within at least 18 months after may therefore be advisable if a high-confidence FTO process is required. In addition, the accuracy and completeness of searches based on publicly available patent databases are also subject to the accuracy and completeness of those databases and the patent subject matter classifications. Follow up searches may help in identifying any discrepancies due to differences in records from different patent databases. During the FTO analysis of the search results, care is required in construing the scope of the claims of issued patents or patent applications discovered in the FTO search(es) to take account of legal precedents on claim language construction in the relevant jurisdictions and to account for legal doctrines such as the doctrine of equivalents. Some of the terms or expressions from the claims may seem on their face to have a plain meaning, but analysis of the claim language must consider the broadest reasonable interpretation of the claim language and the content of the issued patent or patent application being assessed. For any claims with terms or expressions which are deemed ambiguous, care must be taken to try and ascertain what was intended in the patent specification, but alternative constructions resulting from any ambiguity must be considered. This is to minimise any potential risks that the claim language may later be given a broader or different meaning from that which is considered pertinent. Have you observed any significant changes in the demand for FTO opinions during your time in practice? Has this increased in certain sectors? FTO opinions are often required by the pharmaceutical industry and the demand has remained high over the years. For example, we have conducted a considerable number of freedom-tooperate analyses for generic drugs imported for supply by the hospitals here in Hong Kong. The Hong Kong Health Authority requires FTO opinions to be presented when a generic drug is being offered for sale in Hong Kong. In our experience, FTO analysis is highly valued 56 LAWYER MONTHLY APRIL 2023
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