Fight against counterfeiting: enforcement of design patents at the border

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The four key takeaways from the roundtable are:

  1. In the United States, customs officers are authorized by law to seize imported goods that infringe a United States copyright or trademark, but not a registered United States design patent. That leaves the US as an outlier compared to jurisdictions – like the EU, Japan, Korea and China – that enforce registered design rights at the border.
  2. Instead, US customs officials can seize goods that infringe the product design only if that design is registered as a trade dress (a form of trademark) with the Patent and Trademark Office. Registering a product design trade dress in the United States can be a lengthy and expensive process that requires demonstration of “secondary significance”, which can take years to demonstrate, while registration of the same design as design patent can be done immediately and without any such projection.
  3. This creates a loophole, allowing goods that infringe a registered design patent to be legally imported for at least several years, unless and until the intellectual property owner also succeeds in registering that design as trade dress.
  4. The Counterfeit Goods Seizure Bill of 2019 (S.2987) would fill this gap by expressly adding “design patents” to the relevant customs statute, 19 USC § 1595a(c)(2)(C), which which would make enforcement at US borders consistent with the many other global jurisdictions that already enforce registered design rights.
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