Patents and U.S. Customs – Harris Bricken Sliwoski LLP

That is the ultimate installment in our multipart collection designed to assist proper holders and importers higher perceive the alternatives and obligations that connect to mental property rights (IPR) within the U.S. Customs regulatory setting. This installment explores the principle points surrounding the safety and enforcement of patents within the worldwide commerce area and gives finest follow suggestions for the good thing about each proper holders and importers.  


The ultimate matter on this multipart blogpost collection exploring the linkages between worldwide commerce and mental property entails patents. Although there are comparatively few research which try and estimate the influence of patent theft (a phenomenon that’s generally known as “environment friendly infringement”), oblique perception into the scope of the issue could be gleaned from the truth that court-based infringement actions in the USA alone have, between 1996 and 2008, resulted within the awarding of over $4 billion in damages. Considered in opposition to this backdrop, the safety and enforcement of patent rights is, not surprisingly, a priority trade issue for CBP.

Defending and Implementing Patents in U.S. Commerce

The executive safety and enforcement of patent rights within the U.S. commerce setting is achieved by the mixed efforts of the United States International Trade Commission (ITC) and U.S. Customs and Border Protection (CBP). The important thing factors that characterize this joint strategy are finest understood with regards to the 2 discrete phases concerned:

Stage 1: Making a Basis for Enforcement

In the course of the first stage, the ITC, an unbiased, bipartisan physique primarily based in Washington, DC, receives (or initiates), evaluations, investigates, and points determinations with respect to complaints relating to the importation of articles that infringe legitimate and enforceable design or utility patents. In finishing up this work, administrative regulation judges (ALJs) conduct trial-like proceedings that culminate within the making of an preliminary dedication (ID). These Administrative Procedures Act-rooted proceedings are quick (the ITC’s caseload is often referred to the “rocket docket”) and economical (in comparison with the price of pursuing a civil infringement motion in courtroom). Ought to it’s decided that the rights of a patent holder have been infringed and, additional, assuming there is no such thing as a settlement by means of settlement or consent order, the ITC can, relying on the circumstances and aid requested, challenge: (i) a common or restricted exclusion order; (ii) a seizure order; (iii) a stop and desist order; and/or (iv) a penalty. Events who’re dissatisfied with an ITC dedication/order can enchantment the matter to the U.S. Court of Appeals for the Federal Circuit.

Stage 2: Taking Enforcement Motion

Within the second stage, the duty for shielding and implementing patents within the context of worldwide commerce shifts to CBP. If, following the passage of 60 days, the ITC’s findings/actions haven’t been disapproved by the USTR, the Fee’s orders will turn out to be last and absolutely enforceable. This implies, in flip, ending the evaluation interval follow of permitting entry of in any other case excludable articles underneath a single entry bond, denying entry (in a method that enables for export) to articles coming inside an exclusion order, or, in circumstances the place there was a previous try at importation, seizing the merchandise. No mitigation aid is out there in reference to CBP’s seizure of articles discovered to be throughout the scope of an ITC order.

As for the opposite types of patent safety famous above, i.e., stop and desist orders and the penalties that may consequence from their violation, it is very important acknowledge that CBP doesn’t play a job within the enforcement of those issues. These actions stay throughout the purview of the ITC.

CBP doesn’t, on the whole phrases, preserve as excessive a degree of enforcement exercise for patents because it does for emblems and copyrights. This statement is borne out in statistics which present the company has, over the previous 5 years, enforced an annual common of 123 exclusion orders and carried out an annual common of 169 seizures (with a corresponding annual common MSRP of $4,134,173). The diminished dimension of those figures relative to volumes and values related to emblems and copyrights, means that IPRs don’t, in relation to CBP safety and enforcement, obtain the identical prioritization and sources.

Suggestions for Managing Patents within the U.S. Customs Regulatory Surroundings

There are a number of measures proper holders and importers can take to guard their mental property rights and keep away from undesirable scrutiny within the worldwide commerce area.

Proper Holders

Absent being able to document patents, as is the case for emblems and copyrights, with CBP’s IPRR system, the most effective proactive measure a proper holder can take to counter trade-related infringement entails monitoring business rivals and preemptively searching for out proof of illegal use.

Within the occasion infringement is detected, a very powerful reactive measure a patent holder can pursue entails submitting a criticism underneath Part 337 of the Tariff Act of 1930. As laid out above, this measure, the place profitable, places CBP on the alert for infringing merchandise, facilitates subsequent CBP exclusions and seizures, and, on the ITC aspect, opens the door to penalty-backed stop and desist orders. Whereas the most typical complainants in 337 actions are massive firms with deep pockets, the ITC’s Trade Remedy Assistance Office (TRAO) is out there to assist smaller- and medium-sized entities (SMEs) on a freed from cost foundation. This useful resource ensures that SMEs are capable of defend patents in opposition to trade-related infringement in a lot the identical method as their bigger counterparts.

The ultimate measure proper holders can take to guard patents within the U.S. commerce setting consists of providing to fulfill with CBP subject officers in any respect logistically related ports with an eye fixed to offering steering on the distinctive traits and attributes that connect to a selected patent. This info can, when supplied, improve CBP’s monitoring and enforcement capabilities.


Importers can, for his or her half, keep away from undesirable scrutiny from proper holders and/or CBP by adopting and implementing the next finest practices.

The primary entails clearing trade-sensitive patent rights. Although there is no such thing as a searchable and centralized database much like that maintained by CBP for emblems and copyrights (i.e., the IPRS portal), importers ought to, upfront of coming into merchandise, display the ITC’s lists of current investigations and outstanding orders. This can present an importer with helpful perception into whether or not the merchandise they search to import is or might turn out to be the topic of a patent-driven enforcement motion.

Ought to an importer come throughout info that offers it pause, the second finest follow entails accessing the ITC’s EDIS portal for the aim of digging down on the difficulty. Importers can register for an EDIS account here.

If the foregoing measure doesn’t adequately resolve an importer’s doubt, the ultimate finest follow entails asking CBP to challenge a ruling that clarifies whether or not merchandise to be imported comes throughout the scope of an ITC order. Ruling requests can be prepared and submitted here. A positive ruling gives importers with transactional certainty by making certain that merchandise conforming to the info and circumstances set forth in an underlying request will, upon entry, be handled in a method that’s in keeping with the conclusion it reaches.


Navigating patent points in worldwide commerce can, as this blogpost highlights, be difficult and complicated. That is particularly the case for small- and medium- sized entities that lack the authorized spend sources of bigger firms. Understanding the ideas and following the most effective follow suggestions specified by this piece will go an extended approach to making certain that proper holders defend their hard-earned intangible belongings and importers keep away from the delay and expense that may be triggered by non-compliance with the legal guidelines and laws that apply to IPR within the U.S. Customs regulatory setting.