When entering the US market, non-US companies and entrepreneurs need to understand whether and/or how their products or services might infringe upon the intellectual property rights of those already operating in the United States.

Remember, intellectual property (IP) relates to copyrights, trademarks, patents, and trade secrets, and violating the IP rights of someone else (or some other entity) could cost you not only thousands of dollars in fines (and possible criminal charges) but could also delay or prevent your entry into the US market. Often entrepreneurs and companies won’t even realize they’ve infringed on someone else’s IP.

“When infringement occurs, it’s not always obvious,” explains Eric Ludwig, ESQ, an experienced, US-based trial lawyer with an extensive background in intellectual property and business litigation. “IP violations are rarely as blatant as the outright stealing of someone’s business or product idea, though that can occur. Instead, it’s usually much more subtle and perhaps even unintentional, such as using a graphic, logo, brand name, or messaging that’s very close to what someone else is already using in a certain area. Or it comes by way of relying on the work of employees or independent contractors who utilize their prior expertise in doing work for you, which has the potential of infringing on the IP of their previous employers.”

Freedom to Operate

Anyone engaged in the initial stages of product or process development should perform a freedom to operate analysis. Known as an “FTO,” this assessment determines whether a product, technology, or invention infringes on existing patent claims or another’s intellectual property rights in a specific area or country. An FTO goes beyond determining whether or not an idea or process is patentable in the United States. It also checks international records, expired patents, patents pending, competition infringement, government regulations and safety standards, and other areas.

“An FTO is not a definitive legal ‘yes’ or ‘no’ determination as to whether you have the freedom to operate without fear of IP infringement in the United States,” Ludwig cautions. “Cross-licensing agreements, where you work out an arrangement with the current IP rights holder, can help you overcome a negative FTO analysis. But just because you get a positive result from FTO analysis doesn’t mean you’re 100 percent in the clear. That’s why I always recommend that any foreign/overseas company, individual, or entity thinking about entering the United States market, retain competent US-based legal counsel—someone who can commit to a process of due diligence on behalf of the client and advise on various legal issues, especially in the area of best practices concerning IP laws, patents, trademarks, etc.”

Protect Your Product. Your Business. Your Dreams.

Contact Eric Ludwig today for a free, one-hour consultation to discuss whether you need to apply for copyright, patent, and/or trademark protection in the United States.
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