Korean FTO Reports and Design-Arounds: A Practitioner's Guide

Right before launch, every product team faces the same question: "could this product infringe someone's patent?" Answering it is what an FTO (Freedom to Operate) analysis does. A timely FTO reduces post-launch litigation, injunction, and willful-infringement risk; if a problem patent surfaces, the next moves are design-around or licensing. This article walks through how Korean filers should run FTO and design-around in practice — and how the Korean doctrine of equivalents sets the limits of design-around.

What FTO is

An FTO checks whether your product or process falls within any other party's valid patent. The deliverable is typically an opinion issued by a patent attorney — a list of risk-bearing patents, claim-to-product mappings, risk grades, and recommendations (design-around, license, or invalidation).

FTO is not the same as "do I have my own patent." Your own patent can issue and you can still infringe a broader patent owned by someone else. Your own patents are an offensive tool; FTO is defensive. The two efforts cover different patent populations and don't substitute for each other.

Three FTO stages — concept to launch

1. Preliminary FTO — concept stage. Quickly identify risk-patent clusters via keywords and classification. ~20-40 hours
2. Detailed FTO — development / prototype stage. Map claims to product features, review 100+ patents, grade risk. ~100-200 hours
3. Launch FTO — pre-mass-production. Non-infringement opinions on top-tier patents, validate design-arounds. ~40-80 hours

Korean infringement — claim construction + equivalents

Under the Korean Patent Act, infringement is judged first by literal claim construction — if every claim element appears in the accused product, that is literal infringement. The Korean Supreme Court applies a robust doctrine of equivalents: even if a claim element is substituted with something else, infringement still stands when (1) the problem-solving principle is identical, (2) the substituted feature delivers substantially the same effect, and (3) a person of ordinary skill could have easily envisioned the substitution.

The center of the equivalents analysis isn't "is the wording different" but "is the inventive technical idea different." Swapping one word in a claim makes no real difference if the change doesn't disturb the patent's core problem-solving idea. Real design-around lies at the level of problem-solving principle, not at the level of vocabulary.

Design-around — step by step

1. 1. Decompose the risk patent's claims: lay out independent and dependent claims, mapping every element
2. 2. Map your product: build a table linking each part of your product/process to claim elements
3. 3. Find the gaps: identify which elements the product matches and explore how to do it differently
4. 4. Review the spec: judge whether the proposed difference is a real principle difference or a mere formal one — read the entire specification and drawings
5. 5. Validate non-infringement: confirm that the new design escapes both the literal claim and the equivalents test — preferably with an outside attorney opinion

FTO report — what to include

• Product / process scope: model, function, process steps under analysis
• Search scope: keywords, IPC/CPC classes, databases (KIPRIS, Espacenet, USPTO), date range
• Cited patents: ranked High / Medium / Low risk
• Claim-to-product matrix: claim-by-claim element-versus-product comparison
• Equivalents risk: assess where formal-only differences might still trigger the doctrine of equivalents
• Conclusion and recommendations: clear-to-launch / design around / negotiate license / consider invalidation

Frequently asked questions

Do I still need FTO if I have my own patent?

Yes. Your patent is an offensive right — "others infringe if they enter our scope." FTO is defensive — "do we enter someone else's scope?" Different patent populations, different goals; one does not substitute for the other.

If a risk patent is found, do I have to design around?

Four options: (1) design around to escape both literal claim and equivalents, (2) negotiate a license, (3) file an invalidation challenging that patent, (4) accept the risk when the grade is low. Decide based on risk grade, license cost, design-around feasibility, and market value.

Does an FTO opinion immunize me from infringement?

No. Courts treat opinions as input to claim construction and equivalents analysis, not as immunity. But a well-reasoned opinion is the key evidence against willfulness — and against the enhanced damages (e.g., 3x) that follow willful findings in Korea. Get one before launch.