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

This is the last installment in our multipart series created to assistance suitable holders and importers much better have an understanding of the alternatives and obligations that attach to mental property legal rights (IPR) in the U.S. Customs regulatory natural environment. This installment explores the primary challenges bordering the security and enforcement of patents in the global trade arena and features very best apply guidelines for the gain of equally suitable holders and importers.  


The closing subject matter in this multipart blogpost sequence discovering the linkages amongst intercontinental trade and intellectual residence entails patents. Nevertheless there are relatively handful of scientific studies which attempt to estimate the impact of patent theft (a phenomenon that is occasionally referred to as “efficient infringement”), indirect insight into the scope of the challenge can be gleaned from the fact that courtroom-centered infringement steps in the United States by yourself have, amongst 1996 and 2008, resulted in the awarding of in excess of $4 billion in damages. Seen versus this backdrop, the defense and enforcement of patent rights is, not remarkably, a priority trade challenge for CBP.

Preserving and Implementing Patents in U.S. Trade

The administrative security and enforcement of patent legal rights in the U.S. trade atmosphere is attained via the blended attempts of the United States Worldwide Trade Fee (ITC) and U.S. Customs and Border Security (CBP). The important details that characterize this joint method are most effective understood with reference to the two discrete phases involved:

Stage 1: Developing a Foundation for Enforcement

In the course of the 1st phase, the ITC, an impartial, bipartisan body based mostly in Washington, DC, gets (or initiates), assessments, investigates, and difficulties determinations with respect to grievances concerning the importation of articles that infringe valid and enforceable style and design or utility patents. In carrying out this work, administrative regulation judges (ALJs) perform trial-like proceedings that culminate in the producing of an original willpower (ID). These Administrative Methods Act-rooted proceedings are rapid (the ITC’s caseload is generally referred to the “rocket docket”) and affordable (in contrast to the cost of pursuing a civil infringement action in courtroom). Need to it be decided that the rights of a patent holder have been infringed and, even more, assuming there is no settlement by way of agreement or consent order, the ITC can, dependent on the circumstances and aid asked for, difficulty: (i) a general or limited exclusion order (ii) a seizure purchase (iii) a stop and desist get and/or (iv) a penalty. Functions who are dissatisfied with an ITC perseverance/purchase can appeal the issue to the U.S. Court of Appeals for the Federal Circuit.

Phase 2: Taking Enforcement Motion

In the second phase, the accountability for safeguarding and implementing patents in the context of intercontinental trade shifts to CBP. If, subsequent the passage of 60 times, the ITC’s findings/actions have not been disapproved by the USTR, the Commission’s orders will grow to be last and totally enforceable. This means, in influence, ending the assessment period of time practice of allowing entry of or else excludable posts underneath a single entry bond, denying entry (in a way that allows for export) to article content coming in an exclusion order, or, in circumstances exactly where there has been a prior endeavor at importation, seizing the items. No mitigation reduction is obtainable in connection with CBP’s seizure of article content discovered to be within the scope of an ITC purchase.

As for the other kinds of patent security noted over, i.e., stop and desist orders and the penalties that can consequence from their violation, it is essential to figure out that CBP does not engage in a purpose in the enforcement of these matters. The enforcement of these cures remains within just the purview of the ITC.

CBP does not, in common conditions, preserve as higher a level of enforcement activity for patents as it does for trademarks and copyrights. This observation is borne out in statistics which demonstrate the agency has, above the earlier 5 yrs, enforced an annual typical of 123 exclusion orders and carried out an yearly normal of 169 seizures (with a corresponding annual normal MSRP of $4,134,173). The diminished sizing of these figures relative to volumes and values related with trademarks and copyrights implies that IPRs do not, when it arrives to CBP protection and enforcement, get the exact same prioritization and sources.

Suggestions for Running Patents in the U.S. Customs Regulatory Ecosystem

There are various actions appropriate holders and importers can get to shield their mental home rights and stay away from unwanted scrutiny in the worldwide trade arena.

Correct Holders

Absent acquiring the capacity to record patents, as is the scenario for emblems and copyrights, with CBP’s IPRR technique, the best proactive measure a appropriate holder can consider to counter trade-similar infringement entails monitoring sector opponents and preemptively in search of out evidence of illegal use.

In the party infringement is detected, the most crucial reactive evaluate a patent holder can go after entails submitting a complaint less than Segment 337 of the Tariff Act of 1930. As laid out over, this measure, the place productive, puts CBP on the inform for infringing solutions, facilitates subsequent CBP exclusions and seizures, and, on the ITC aspect, opens the door to penalty-backed cease and desist orders. Even though the most frequent complainants in 337 actions are significant corporations with deep pockets, the ITC’s Trade Cure Aid Office (TRAO) is offered to help scaled-down- and medium-sized entities (SMEs) on a absolutely free of demand foundation. This useful resource assures that SMEs are equipped to shield patents from trade-related infringement in significantly the same way as their more substantial counterparts.

The remaining measure suitable holders can consider to guard patents in the U.S. trade atmosphere is made up of providing to fulfill with CBP industry officers at all logistically appropriate ports with an eye to supplying direction on the exclusive attributes and characteristics that attach to a particular patent. This information can, when supplied, increase CBP’s monitoring and enforcement capabilities.


Importers can, for their component, prevent undesired scrutiny from correct holders and/or CBP by adopting and utilizing the following most effective procedures.

The to start with requires clearing trade-sensitive patent legal rights. Although there is no searchable and centralized database equivalent to that preserved by CBP for logos and copyrights (i.e., the IPRS portal), importers really should, in advance of coming into goods, display screen the ITC’s lists of recent investigations and fantastic orders. This will give an importer with handy insight into irrespective of whether the items they search for to import is or could develop into the issue of a patent-driven enforcement action.

Really should an importer arrive across facts that provides it pause, the next ideal exercise consists of accessing the ITC’s EDIS portal for the objective of digging down on the difficulty. Importers can sign up for an EDIS account right here.

If the foregoing measure does not sufficiently resolve an importer’s doubt, the closing greatest follow entails asking CBP to challenge a ruling that clarifies regardless of whether merchandise to be imported comes in just the scope of an ITC purchase. Ruling requests can be well prepared and submitted here. A favorable ruling offers importers with transactional certainty by making certain that goods conforming to the specifics and situations set forth in an fundamental ask for will, upon entry, be dealt with in a way that is dependable with the conclusion it reaches.


Navigating patent challenges in international trade can, as this blogpost highlights, be tough and sophisticated. This is specially the situation for smaller- and medium- sized entities that deficiency the authorized devote resources of greater businesses. Comprehending the principles and pursuing the finest practice ideas laid out in this piece will go a prolonged way to ensuring that right holders guard their difficult-attained intangible property and importers stay away from the hold off and price that can be induced by non-compliance with the legislation and regulations that utilize to IPR in the U.S. Customs regulatory ecosystem.