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New U.S. Senate Bill Seeks to Grant Authority to Enforce Design Patents at Customs


Source: James J. Aquilina, Quarles & Brady LLP

A new bill introduced in the U.S. Senate would authorize U.S. Customs and Border Protection (“CBP”) to take action against imported products that infringe U.S. design patent rights, thus extending to design patents the same protection currently enjoyed by copyrighted works and trademarks. Design patents are a critical component of a well-developed intellectual property (“IP”) portfolio and enjoy a special damages remedy that allows for disgorgement of the infringer’s total profits for sales of the infringing “article of manufacture” to which the patented design is applied. Extending Customs enforcement to design patents would be of huge benefit to companies that do business within the United States.

U.S. design patents protect the new, non-functional, ornamental appearances of manufactured products, and are commonly used to protect designs embodied in all manner of products, including but not limited to medical devices, automobile parts, sporting goods, furniture, footwear, toys, electronic devices, and software graphical user interfaces (“GUIs”).

Design Patent Infringement Would be Placed on Equal Footing With Copyright or Trademark Violations

Title 19 of the U.S. Code, Section 1595a(c)(2), currently permits CBP to seize and render forfeit any imported merchandise or packaging involving copyright or trademark violations. The law does not presently authorize CBP to take action against merchandise or packaging that infringes the rights of owners of U.S. design patents. Senate Bill S.2987, introduced on December 5, 2019 by Thom Tillis (R-NC), chairman of the Senate Judiciary Committee’s intellectual property subcommittee, and co-sponsored by Senators Coons (D-DE), Cassidy (R-LA), and Hirono (D-HI), would amend this section of the law to enable CBP to enforce these rights at our nation’s ports and borders.

CBP Would Join Frontline of Design Patent Enforcement

If this Bill were to become law, design patent owners would be able to register their rights with CBP and then educate CBP personnel on the scope of their issued design patents through the creation of a Product ID Guide and Product ID Webinar. CBP could then be alerted to suspected shipments or parties that are infringing these patented rights through an online submission page. In our experience, providing tools for officials to know what to look for is key to making customs support effective. Working closely with Customs officials–beyond just recording rights with CBP–has paid dividends in the fight against trademark counterfeits, and we anticipate this being just as important with respect to design patents.

Enabling CBP to enforce design patents at the border would provide a powerful tool against pirated products and further enhance the already-substantial value of U.S. design patent rights as part of a robust IP portfolio.

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