Senate Bill 2987 (S. 2987) was introduced on Dec. 5, 2019, with the aim of giving U.S. Customs and Border Protection (CBP) the authority to seize imported items that infringe design patents. In view of CBP’s existing legal authority to protect trademarks and copyrights on its own initiative, i.e., ex officio, S. 2987’s intent is to give CBP the authority to protect design patents in a similar manner.

S. 2987 proposes to amend only Section 1595a(c)(2)(C) of the Customs Law (19 USC §1595a(c)(2)(C)) by inserting the specific reference to “design patent” and sections 271 and 289 of the patent law. The expansion of CBP authority to exercise its intellectual property rights (IPR) enforcement authority to design patents would place the U.S. on par with other countries whose intellectual property (IP) border enforcement measures already provide for design patent protections. For example, the IP border measures that are available in Japan and the European Union allow owners of design patents to apply for protection with their customs authorities.

While the introduction of S. 2987 is an important development for U.S. IP border measures, potentially giving CBP authority to seize goods that infringe design patents, there is not yet a companion bill in the House of Representatives.

Section 3 of S. 2987 states that “The Commissioner of U.S. Customs and Border Protection may prescribe regulations … .” While the language refers to regulations relating to the imposition of fees for administrative expenses and recordation of the design patent with CBP, the CBP, if it follows past practice, also would draft regulations regarding its enforcement process and procedures in order to educate its personnel and industry regarding design patent enforcement.

The extension of CBP authority to initiate the detention of goods suspected of infringing design patents will likely be subject to serious discussion regarding both the similarities and differences between CBP’s current role of determining trademark infringement (whether a suspect good bears a confusingly similar mark or bears a counterfeit mark) and its potential future role of determining design patent infringement. Some may believe that CBP’s current authority to enforce trademarks, especially configuration marks, is similar to what would be asked of CBP if its authority is extended to design patents.

At present, CBP officers have access to trademarks that are recorded in CBP’s database and they also can access the U.S. Patent and Trademark Office’s (USPTO) public database of U.S.-registered marks and view the marks and the class of goods for which the marks are registered. In the event that CBP officers at the ports have questions about infringement, they have support from other CBP offices for advice and legal counsel.

S. 2987 would permit owners of design patents to record with CBP, although design patents are currently available to view on USPTO’s database. Industry support of CBP’s broader enforcement authority should include its views of how CBP field officers can identify suspected design patent infringement. Would CBP officers focus on the language of the claim(s) for the design to be protected or a combination of the claim and the images accompanying the claim(s) and would one be more important than the other? Given that the images accompanying the design patent are critical to understanding what the protected design encompasses, it will be extremely important for CBP to understand how its field officers make the initial determination to detain suspect goods.

For instance, in some cases the written claim for a design patent is very similar or identical to another design patent, e.g., D803,743 and D804,380 have identical language in the claim: an ornamental design for an instrument panel for an automobile. Due to the general nature of the claim in some design patents, instruction to CBP officers as to how narrowly (or broadly) to apply claims and images to imported goods will become an issue when taking action to prevent release of shipments.

It will, therefore, be incumbent upon the design patent community to decide whether it wants CBP to make the initial legal determination of infringement as it does currently regarding trademarks and copyrights. Even if the design patent community supports CBP’s role in making initial determinations of infringement, should this be done within the existing framework or would industry propose a new CBP framework?

To the extent that the design patent community wants CBP to have this broader authority in the near term, it should be aware of some past history that illustrates the need for industry’s constant monitoring and engagement. One example is the “Lever-Rule” in the current customs regulations. As noted in the Feb. 24, 1999 Federal Register, it took years to publish a final rule arising from the 1993 Court of Appeals decision in Lever Brothers v. U.S. that dealt with Customs enforcement against certain gray market goods.

The Anti-Counterfeiting Consumer Protection Act of 1996 included an amendment to 19 USC §1484(d) stating that, “The Secretary [of the Treasury], in prescribing regulations governing the content of entry documentation, shall require that entry documentation contain such information as may be necessary to determine whether the imported merchandise bears an infringing trademark … including a trademark appearing on the goods or packaging.” The instruction that would seem to require Customs to promulgate regulations that implement this statutory provision have been overlooked for the past 23 years.

Ultimately, industry and the relevant government agencies involved should have meaningful dialogue in order to determine a resolution to design patent protection. There are numerous substantive issues that are involved in any such discussion and those issues should be addressed in order for an effective enforcement system to be implemented.

This post was written by Timothy Trainer, a co-author of Customs Enforcement of Intellectual Property Rights, published by Thomson Reuters. Follow Trainer on Twitter @TTrainerglobal.

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