US CUSTOMS
Patent enforcement Step 1: Exclusion order enforcement
Aſter an exclusion order is issued by the ITC, CBP does not receive any additional guidance from the ITC regarding enforcement. In fact, the language of the exclusion order oſten lacks specificity, leaving CBP to make patent infringement determinations, including determinations regarding articles and goods not addressed before the ITC.
Te exclusion order cannot be enforced until CBP provides instructions to the field officials regarding the scope and limits of the exclusion order. CBP begins by analysing the Section 337 investigation history, including the Administrative Law Judge initial determination and the ITC opinion. CBP officials responsible for draſting the instructions also meet ex parte with the complainant, respondent, and any other affected party. Tese ex parte meetings provide the parties with an opportunity to discuss how CBP should enforce the exclusion order.
When seeking enforcement of the exclusion order, the complainant should present detailed product information to CBP. Aſter enforcement instructions are provided to the field officials, the complainant should continue to monitor the marketplace and provide updated information to CBP to facilitate enforcement of the exclusion order.
It is worth noting that the 2010 Joint Strategic Plan on IP Enforcement indicated that the ITC and CBP are planning to explore procedures to facilitate and encourage communication between CBP and ITC with respect to the scope of exclusion orders.
IP rights e-recordation programme and provides IP infringement determinations and rulings.
Improving CBP’s ability to protect your rights
Counterfeit and pirated goods are becoming much more sophisticated, and it is increasingly difficult to distinguish legitimate goods from fakes. IP owners can help CBP with the process by understanding that the relationship with CBP works most effectively when it is a two-way street. It is important to maintain a central point of contact between CBP and the IP owner or its agent/attorney, so that a prompt determination can be made as to whether the seized goods are truly counterfeit.
Furthermore, to enhance the efficiency and transparency of the exclusion order enforcement process, CBP plans to consider development of an inter partes proceeding involving the relevant parties to the ITC investigation.
Step 2: Further enforcement proceedings
If CBP enforcement is unsatisfactory, the complainant can seek informal enforcement proceedings before the ITC. Tese informal proceedings are conducted through the Office of Unfair Import Investigations. As a result of the informal proceedings, the ITC can issue a new order to compel compliance with the exclusion order. If the matter is not resolved through the informal enforcement proceedings, formal enforcement proceedings can be instituted.
To conduct formal enforcement proceedings, the complainant files a complaint detailing the alleged violations of any exclusion order, cease and desist order, or consent order. As a result of the formal proceeding, the ITC can modify its order in any manner necessary to remedy the violations. Te ITC can also impose civil penalties for violations of the order.
Step 3: Provide product identification guides
Similar to product guides for trademarks, guides prepared in connection with ITC exclusion orders are not placed on the agency’s intranet but are, instead, incorporated in the field instructions that implement the order.
Step 4: Training
Product identification training for ITC exclusion orders must first be coordinated with the IPR and Restricted Merchandise Branch, which oversees the
56 World Intellectual Property Review Annual 2012
www.worldipreview.com
Monica Riva Talley is a director in the trademark practice at IP firm Sterne, Kessler, Goldstein & Fox PLLC. She is based in Washington, DC and can be contacted at:
mtalley@skgf.com
Graham Phero is an associate at Sterne, Kessler, Goldstein & Fox PLLC. He can be contacted at:
gphero@skgf.com
No matter what type of IP is at stake, CBP is an essential ally to thwart copyright, patent, and trademark infringers seeking to infiltrate the US market with counterfeit products. By working closely with CBP, IP owners can help enhance the protection the agency provides. n
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