Can U.S. Customs Police Patent Infringement?

The U.S. Bureau of Customs and Border Protection fails to appropriately police imports for patent infringement, according to a recent lawsuit by Microsoft Corp. The company alleges that the agency is allowing Motorola Mobility Inc. to import devices that infringe certain Microsoft patents violation of an order from the U.S. International Trade Commission.

Pursuant to a May 2012 ITC order, Motorola Mobility, now owned by Google, infringed a Microsoft patent for generating and synchronizing calendar items. The order also banned any infringing device from entering the United States.

However, according to Microsoft’s complaint, the U.S. Bureau of Customs and Border Protection (CBP) continues to allow infringing devices into the country. “The CBP has allowed the important of infringing devices based on claims that Microsoft made on an ex parte basis, and that CBP has accepted without providing Microsoft with notice of those claims, much less an opportunity to address them,” the complaint alleges.

“Most egregiously, CBP has allowed Motorola to relitigate—in secret—issues that Motorola lost before the Commission, and has granted Motorola precisely the relief that the Commission expressly refused to grant after full, fair, and open litigation,” Microsoft further argues. Meanwhile, Google maintains that Microsoft is seeking to impermissibly expand the scope of the ITC order.

While Microsoft’s allegations against the CBP must be decided in court, the case raises the larger question of whether the agency is equipped to deal with the recent influx of patent infringement cases. As former ITC chairman, Deanna Tanner Okun, told Reuters, the customs bureau may lack the expertise to enforce the orders. “Problems have increased. The system is outdated,” she said. “They’re using practices and procedures that are 20 years old.”

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

New Customs Rules To Help Trademark Owners Track Counterfeit Goods.

New rules proposed by the U.S. Customs and Border Protection (CBP) will help trademark owners prevent counterfeit goods from entering the U.S. market. The Intellectual Property Rights Interim Final Rule (IFR) will allow the agency to share information about potentially infringing products with trademark holders.

As explained in by in this CBP news release, the IFR amends regulations pertaining to importation of merchandise bearing recorded trademarks or recorded trade names. This change provides a pre-seizure procedure for disclosing information about imported merchandise suspected of bearing a counterfeit mark for the limited purpose of obtaining the right holder’s assistance in determining whether the mark is counterfeit or not.

secret

Prior to this rule, the agency had interpreted the Trade Secrets Act to bar such disclosures. However, as the interim rule notes, “The protection afforded by the Trade Secrets Act, however, must be balanced against the important and legitimate interests of government.”

Under the new rule, the CFP is authorized to disclose to rights holders information appearing on merchandise or retail packaging that may have information otherwise protected by the Trade Secrets Act.  This information includes photographs, a sample of the goods and/or their retail packaging as well as serial numbers, universal product codes, and stock keeping unit numbers.

This amendment also establishes a procedure to protect importers. It requires that before any information or sample is sent to the right holder, the importer will be provided notice, and an opportunity to show that the suspect merchandise is authentic.

How Can I Help?

If you need help to policing your trademark rights to prevent the importation of infringing products or good, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman