New Customs & Border Protection Announcements on IPR: Clarifying or Confusing?
U.S. Customs and Border Protection (CBP) issued a press release on February 15, 2018, stating that it had entered into a first of its kind arrangement with Procter & Gamble (P&G) where the company will donate testing devices to CBP that will enable officers to verify the authenticity of P&G products and detect counterfeit goods. The next day, CBP and U.S. Immigration and Customs Enforcement (ICE) issued a joint Federal Register Notice (FRN) outlining procedures for the private sector to participate in trade-related training, including intellectual property rights (IPR), of CBP and ICE personnel.
Both the release and the FRN reference the Trade Facilitation and Trade Enforcement Act of 2015 (Act of 2015), which in Section 308 directs CBP’s Commissioner to ensure that its personnel “are trained to effectively detect and identify merchandise… that infringes intellectual property rights.” The section further states that CBP should enact regulations that allow the receipt “of donations of hardware, software, equipment, and similar technologies, and to accept training and other support services, from private sector entities, for the purpose of enforcing intellectual property rights.”
CBP has enacted a regulation regarding donations in compliance with the Act of 2015 – section 133.61 is now part of the CBP regulations addressing IPR enforcement – but it does not, however, address the issue of training.
The recent FRN outlines a procedure for private sector training requests and is clear in stating that CBP and ICE will evaluate the requests, and decide on these requests in compliance with the Act of 2015. Essentially, the FRN lists the required data necessary for private sector training requests submitted to CBP and ICE. Some of the data required in the training request include providing the instructional material to be covered, identifying the person(s) delivering the training and qualification of the person(s), CBP or ICE ports or locations for the training, and proposed dates of the training and estimated length of the training session.
For IPR owners, they may be forgiven if there is a level of confusion arising from the FRN. While stating that it is intended to fulfill the statutory requirements of the Act of 2015, the FRN does not state clearly that the training request procedure is limited to situations where IPR owners are donating hardware, software, equipment or other similar technologies that require training to correctly use the donated item(s).
There are IPR owners and representative trade organizations that have had ongoing training for CBP, ICE and other enforcement authorities for decades. As to the IPR training that IPR owners and representative trade organizations have been conducting for years preceding the FRN, that training has benefited both the private sector, CBP and ICE by promoting cooperation resulting in IPR protection and prevention of cross border trade in infringing goods. The training that has been ongoing and precedes the FRN may be covered by the last paragraph of the FRN, which states:
Please note that nothing in TFTEA [Act of 2015] or this notice precludes or limits CBP or ICE from soliciting private sector parties to participate in specific training programs considered useful to the missions of the agencies or from continuing any such current training programs with private sector parties.
Effective border enforcement occurs when neither IPR owners nor government agencies are burdened by overly bureaucratic processes. To encourage IPR owners to provide information regarding identification and detection of genuine versus infringing goods requires open channels of communication between the private sector and CBP/ICE. If the FRN language above is meant to exempt routine IPR training that the private sector has been providing for decades, it should be explicitly noted that the language does not prevent the private sector from continuing to contact and coordinate training at local CBP/ICE offices. IPR owners who want to conduct IPR training for CBP and ICE personnel are advised to contact CBP and ICE in order to clarify whether the FRN training requests are specific to training in the use of hardware, software, equipment or other technologies donated, or whether the procedure applies to all forms of IPR training.
This post was written by Timothy Trainer, coauthor of Customs Enforcement of Intellectual Property Rights. Trainer also is the founder of the Global Intellectual Property Strategy Center, P.C., a consulting firm representing domestic and international clients, in Washington, D.C. Follow Trainer on Twitter @TTrainerglobal