A freedom to operate (FTO) analysis is a key tool for strengthening a protective brief against an application for a preliminary injunction (einstweilige Verfügung). Its purpose is to establish that the company’s products do not infringe existing patents, trademarks or designs, and so to make it harder for a competitor to obtain an injunction.
In short:
- A protective brief (Schutzschrift) is a proactive legal defence mechanism; an FTO analysis is the document that supports the position that the products do not infringe third-party rights.
- If a competitor files for a preliminary injunction, the value of the FTO analysis lies not in showing good faith but in demonstrating, concretely and technically, that there is no infringement: the injunction claim is fault-independent (§ 139(1) PatG; § 14(5) MarkenG), and fault matters only for damages (§ 139(2) PatG; § 14(6) MarkenG).
How Does an FTO Analysis Strengthen the Legal Arguments in a Protective Brief?
A. Establishing That There Is No Patent Infringement (The Core Argument of the Protective Brief)
- The analysis determines whether the product infringes patents in force in Germany or Europe.
- If it shows no overlap with existing patents, the findings can be attached to the protective brief to answer patent infringement claims before they are made.
- That prevents competitors from obtaining a preliminary injunction on the basis of unfounded claims.
Example:
An American company wants to exhibit a new industrial sensor at a trade fair in Germany.
- A competitor files for a preliminary injunction alleging patent infringement.
- If the company has commissioned an FTO analysis and shown that the sensor infringes no existing patent, those documents can be attached to the protective brief.
- The court may find the infringement claims insufficient and refuse the injunction.
B. Defence Against Trademark and Design Right Infringement Claims
- An FTO analysis checks whether the company’s brand name, logo or product design is too close to a registered trademark or design.
- If the analysis shows the product or brand to be sufficiently distinct in law, it can be attached to the protective brief to show that the injunction application is unfounded.
Example:
A Turkish fashion brand wants to launch a new shoe line called “MODALEX” in Germany.
- A German competitor files for a preliminary injunction, arguing that it could be confused with the “MODA LUX” trademark.
- If the FTO analysis has set out clearly the differences in spelling and pronunciation between the two trademarks, and whether the goods or services are in fact similar (their nature, intended purpose, distribution channels and complementarity), it can be attached to the protective brief. Goods and services are not dissimilar merely because they fall in different Nice classes (Article 33(7) of Regulation (EU) 2017/1001).
- Taking the FTO analysis into account, the court may decline to issue a preliminary injunction.
How Should an FTO Analysis Be Used in a Protective Brief?
Step 1: Preparing a Legally Valid FTO Analysis
The FTO analysis should be carried out by an industrial property lawyer.
It should cover all relevant registers in Germany and the EU: patents, German utility models (Gebrauchsmuster), trademarks, registered designs and the risk of an unregistered EU design. A utility model is registered without substantive examination (§ 8(1) GebrMG) and carries a six-month grace period for the applicant’s own disclosures (§ 3(1) GebrMG).
Step 2: Incorporating the FTO Findings into the Protective Brief
Sample contents of an FTO report to attach to the protective brief:
Patent and utility-model search results → documents establishing, as at the search date and within the stated scope, that no infringement risk was identified (applications not yet published within the 18-month period cannot be captured).
Trademark analysis → reports showing that the product’s brand name is distinct in law.
Design rights review → design searches demonstrating that the product’s appearance is its own.
Conclusion: Why Should a Protective Brief Include an FTO Analysis?
It provides a strong legal defence against swift preliminary injunction orders.
It shows the court that the company acted in good faith and in compliance with the law.
It makes it more difficult for competitors to abuse the legal process.
For more information: Secure Your Trade Fair Participation in Germany: Protect Yourself Against Your Competitors’ Preliminary Injunctions with a Protective Brief
