Design Patents Protected at the Border – Bill Allows US Customs to Seize Goods Infringing Patent Designs | Foley & Lardner LLP


The proposed bipartisan legislation would grant the US Customs and Border Patrol (CBP) the power to seize goods that infringe US design patents, which protect the ornamental appearance of articles of manufacture. CBP already has the power to seize products that infringe trademarks and copyrights, but no power when it comes to design patents. Legislation, presented by the senses. Thom Tillis (R-NC), Chris Coons (D-DE), Bill Cassidy (R-LA) and Mazie Hirono (D-HI) as “The Counterfeit Goods Seizure Act of 2019” (CGSA) S. 2987 , would extend CBP’s power to confiscate goods that infringe designs protected by a US design patent. Design patents have become a more important tool for innovators, with design patent grants in the United States increasing steadily from about 20,000 per year in 2006 to nearly 35,000 in 2019.

Counterfeit goods enter the United States every day, with the global counterfeit trade estimated to be worth nearly $2 trillion by 2022. To cite just one example, CBP announced in early July that it had intercepted 5 $.5 million worth of counterfeit sleepwear, including imitation Gucci products, to a California port. According to a 2020 DHS report, fake clothing, shoes, watches and jewelry, handbags and wallets, and consumer electronics are among the top items seized by CBP.

CBP Authority

CBP has the authority to detain, seize, confiscate, and ultimately destroy goods entering the United States that bear an infringing trademark or copyright that has been registered with the U.S. Patent and Trademark Office or the U.S. Copyright Office, then registered with CBP. Current federal customs law provides for the seizure and forfeiture of “goods or packaging in which violations of copyright, trademark, or trade name protection are involved.” 19 USC § 1595a(c)(2)(C).

The CBP program allows for the active participation of the Intellectual Property Rights (IPR) owner, who must register the trademark or copyright with CBP. CBP may ask the owner to help determine if an infringing mark is present. Often, owners will provide training materials and product guides to CBP officers to help them distinguish genuine goods from counterfeits. Under CBP’s Donation Acceptance Program (DAP), an owner can donate goods or services to help CBP authenticate merchandise. To see 19 CFR § 133.61. Through the DAP, CBP has partnered with companies such as Otter Products, LLC, Procter & Gamble, Apple, Inc., and Cisco Systems, to detect counterfeits.

CBP’s current authority does not extend to design patents, as noted above, and therefore design patent holders seeking to prevent the importation of counterfeit items should turn to the CBP Commission. international trade (ITC) or federal court. ITC investigations, while generally much faster than district court proceedings, take several months to resolve, are usually expensive, and require a great deal of documentation and effort on the part of the design patent holder. . To pass the ITC, the patentee must demonstrate importation, counterfeiting, and a domestic industry related to the items protected by the patent.

As noted, CBP is currently authorized to seize products suspected of infringing US registered trademarks, such as the trademark of an older iPhone model, as shown below:

USTM Reg. No. 3475327

However, CBP currently does not have the authority to seize products suspected of infringing design patents, such as the design patent shown below, which pertains to an older model iPhone, similar to the one described below. above :

Pat.  D593 087

Pat. D593 087

As shown in the images above, US trademark registrations and granted design patents cover overlapping subject matter, while both forms of intellectual property carry the same limitation, in that protection is not is granted only to aesthetic and non-functional design elements. With such a large overlap of subject matter, it would not appear that CBP imposes a significant burden to expand the scope of its jurisdiction to include design patents.

The proposed legislation

Proposed CGSA revises the Tariff Act of 1930 to explicitly identify design patents in the list of intellectual property rights for which infringing goods may be seized and forfeited under 19 USC § 1595a(c)(2)(C) .

Border enforcement of design patent rights can be implemented analogously to the Trademark Protocol. Here is a general overview of the process when CBP suspects that imported goods violate trademark rights:

1) CBP holds items suspected of infringing the registered trademark for up to 30 days and notifies the importer within five days. The importer has 30 days to deny the violation.

2) If the importer does not provide an adequate response to CBP’s notice within seven days (or does not respond at all), CBP notifies the brand owner and may provide unredacted images of the suspect items .

3) After 30 days without sufficient response or after the owner demonstrates infringement, CBP seizes and eventually destroys the items.

The importer can request relief during the initial detention of 30 days and 30 days after notice of seizure, and can abandon the goods or compromise with the rights holder.

To see 19 CFR § 133.21.

As noted above, this procedure moves much faster than litigation in the ITC or the district courts and helps prevent allegedly infringing products from entering the U.S. market, thereby protecting both the U.S. consumer and the design patent holder.

The proposed legislation would allow CBP to charge fees for registering design patents. Currently, for trademark registration, the fee is $190 per trademark for each class of products and $80 per class for each renewal. For copyright registration, the fee is $190 per copyright and $80 for each renewal.

Additionally, public-private partnerships such as the DAP could likely be expanded to allow US design patent holders to submit authentication aids.

Stakeholder voice

Various industry groups have expressed strong support for the proposed legislation, including Footwear Distributors and Retailers of America, Intellectual Property Owners (IPOs) and American Intellectual Property Law Associations, and the International Trademark Association ( INTA). (Foley & Lardner is a member of the IPO and an associate member of INTA.) Stakeholders have the opportunity to influence legislation through dialogue with its sponsors before it goes to markup.

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