Enforcement of Intellectual Property Rights at the U.S. Border

Swaroop-Sheila-WEB 2015-08-01.jpg

Enforcement of Intellectual Property Rights at the U.S. Border

Intellectual property rights in the United States – in the form of patents, copyrights, and trademarks - provide protection to a company when its technology is used by others without permission.   The most common way to enforce these rights is through a court action for infringement.  However, intellectual property owners should also be aware of an additional avenue in the United States that provides a powerful mechanism for enforcing their rights – the United States International Trade Commission.

Based in Washington DC, the International Trade Commission (ITC) is an administrative agency tasked with enforcing U.S. trade laws.  Within the arena of intellectual property, the ITC receives complaints regarding infringing products that are entering the United
 States, and has the ability to issue import bans that block these infringing products at the U.S. border.  The ITC can also block the sale or distribution of infringing products that have already been imported.  However, the ITC cannot be used to recover monetary damages.  The ITC is available to owners of U.S. patents, copyrights, and trademarks, and has also been used to assert claims of false advertising and unfair competition.  The ITC’s rules require completion of its investigations in an expedited manner.  As a result, the ITC typically issues decisions about 16 months from the start of an investigation, a timeline that is faster than many U.S. court proceedings.  
To obtain an import ban, a company needs to show (1) infringement by goods being imported into the United States; and (2) an industry in the United States that is using and investing in the intellectual property that is being infringed.  This second “industry” requirement is unique to the ITC.  It requires proof of authorized products that use the intellectual property and proof of U.S. investments.  After the ITC issues an import ban, it is enforced by U.S. Customs and Border Protection, who monitors ports of entry for the infringing products.    

The ITC has become an increasingly popular avenue for enforcing intellectual property rights.  Over the past five years, more than 240 such investigations have been filed at the ITC, with the vast majority involving claims of patent infringement. In those investigations, five have included Canadian companies enforcing their rights in the U.S.  In addition, over twenty Canadian companies have been the target of ITC investigations during this same time frame.  
Because of the speed of the ITC and its ability to issue import bans, companies who have invested in U.S. intellectual property rights should consider the ITC when developing an enforcement strategy.

Ms. Sheila Swaroop is a partner at the Irvine, CA office of Knobbe Martens Olson & Bear, LLP. She can be reached at sheila.swaroop@knobbe.com. For more information on Knobbe Martens, please visit www.knobbe.com.