Hunton Retail Law Resource

Earlier this month, a bipartisan group of senators introduced a bill—the Counterfeit Goods Seizure Act of 2019—to expand the authority of US Customs and Border Protection (CBP) to seize counterfeit goods that infringe intellectual property rights, specifically design patents, at the border. The senators expect the legislation, if passed, to help stem the tide of counterfeits (with a global trade value estimated at over $1 trillion) by preventing their importation into the US.

CBP can presently seize counterfeit products covered by trademarks and copyrights registered with CBP, but not patents. The proposed bill seeks to add design patents, which protect ornamental features of a product, to the list of intellectual property that CBP can enforce at the border to limit the flow of counterfeit goods into the US.

Border enforcement of patent rights, both utility and design patents, currently requires an exclusion order issued by the US International Trade Commission (ITC) after an extensive investigation concludes in favor of the patent owner. Although these ITC “section 337 investigations” are often effective, such investigations can be time-consuming and expensive for intellectual property owners. If the proposed legislation is enacted, owners of design patents will have an opportunity to register their US design patents with CBP. Once registered, CBP could then seize counterfeit goods that are covered by the registered design patent, the same way it now enforces registered trademarks and copyrights.

If this bipartisan Senate bill, which also enjoys broad industry support, is ultimately passed into law, it will provide a new cost-effective remedy for design patent owners to enforce their rights.  This will also create an incentive for retailers and other companies to expand their pursuit of design patents to take advantage of this powerful proposed enforcement mechanism to protect their brand, their bottom line and consumer safety.

For more detail, please see our related client alert here.