Questions & Answers on Managing Intellectual Property Rights in the U.S. Customs Regulatory Environment
Earlier this year I sat down with the Asociación Interamericana de la Propiedad Intelectual (ASIPI) to discuss what can be done to protect trademarks, copyrights, and patents in the U.S. Customs regulatory environment. The following questions and answers are from this exchange.
In the context of international trade, which governmental agencies are responsible for protecting intellectual property? What are their respective roles?
For starters, it is important to clarify that we are talking at the federal level and in an administrative sense. Obviously there are remedies available through the courts. But this is not the focus of these remarks.
First, we must think of the agencies that create the conditions for protecting intellectual property in the context of international trade – i.e., the U.S. Patent & Trademark Office and the U.S. Copyright Office (USPTO and USCO). Those are the U.S. federal agencies responsible for reviewing and registering trademarks and copyrights. These registrations, as will be explained later, are a prerequisite for a right holder to maximize the quality and quantity of administrative protection available for trademarks and copyrights in international trade.
The protection of patents, on the other hand, is provided for through the U.S. International Trade Commission (ITC). The Commission is responsible for investigating trade-related allegations of patent infringement, making final determinations and, if the facts and circumstances warrant, issuing exclusion orders.
Finally, no discussion of the agencies involved in protecting IPR in international trade would be complete without mentioning U.S. Customs & Border Protection (CBP). This is the agency with the most important role on protecting intellectual property in international trade. This agency is responsible for identifying, stopping, evaluating, excluding, seizing, fining, and forfeiting counterfeit merchandise, pirated works, and goods that infringe U.S. patents.
Focusing on CBP, what types of intellectual property does the agency protect? Just brands?
No, to the contrary, the agency is involved in protecting all forms of intellectual property. With trademarks, CBP offers protection in connection with three forms of infringement – counterfeits, goods bearing confusingly similar marks, and parallel imports. With respect to copyright, CBP recognizes two levels of infringement. The first level deals with clearly pirated goods. The second is about goods that are possibly pirated. And finally, with regard to patents, CBP protects patent holders by enforcing exclusion orders issued by the ITC.
How can trademark and copyright holders take advantage of the protections provided by CBP?
First, rights holders must register the trademarks they have registered with the USPTO and the copyrights they have registered with the USCO with CBP. Without taking this step, there is a reduced level of protection available to intellectual property rights holders in the U.S. customs context. Second, rights holders must establish and maintain open lines of communication with customs officials at the relevant ports. Third, rights holders must proactively educate CBP officers at relevant ports about the distinctive features of their intellectual property, thereby maximizing the probability that CBP will be able to detect and detain violative importations. These efforts should, in the interest of achieving optimal results, be combined with robust market (digital and brick/mortar) monitoring and violation reporting (e-Allegations to CBP) practices.
What is the procedure for recording intellectual property rights with CBP?
The process for recording intellectual property rights with CBP is simple, fast, and inexpensive. Here are the steps:
- After having registered a trademark with the USPTO or a copyright with the USCO, an application is submitted through the Online Application System for the Electronic Recordation of Intellectual Property Rights (IPRR). Remember that only registered trademarks and copyrights can be recorded with the IPRR system. Patents cannot be recorded in the IPRR system.
- Pay the corresponding registration fee ($190 per international class of good or copyright).
The large number of U.S. ports, airports, and land crossings can make it difficult to communicate with front-line officers. How can companies manage this situation?
There is, on top of the registration, educational, monitoring, and reporting measures mentioned above, an additional step right holders can take to manage intellectual property rights across the vast network of ports and stations administered by CBP. This involves ensuring that right holders properly enter and maintain their contact information in CBP’s database. CBP will have a difficult time stopping merchandise that infringes the IPRs of third parties if port-level field officers are unable to timely/reliably communicate with right holders.
Coming back to patents, what protections are available in the U.S. Customs regulatory environment?
They are basically two:
- As mentioned previously, a right holder may obtain a general or limited exclusion order against imported goods that infringe a U.S. patent. Once issued by the ITC, CBP will enter that order into its system and exclude the infringing merchandise.
- In addition to the foregoing, a right holder may apply for and obtain a cease and desist order from the ITC in relation to its claim of patent infringement. This order, when granted, will be executed by the ITC, not CBP.
What are the consequences of importing merchandise that infringes the intellectual property rights of third parties?
There are several potential consequences for violating the intellectual property of rights holders. These include the exclusion, detention, and seizure/forfeiture of the infringing merchandise, as well as the imposition of penalties. The most serious violations may be referred to the U.S. Department of Justice for judicial resolution. In certain cases, it is possible to file an administrative petition for the remission of the seizure or the mitigation/cancelation of the penalty. Decisions on administrative petitions are made by port-based fines, penalty, and forfeiture officers in accordance with published guidelines.