On October 13, 2008, the PRO-IP Act created the position of Intellectual Property Enforcement Coordinator (“IPEC”) to coordinate the federal government’s enforcement of IP laws, both in the United States and abroad, including in particular “matters relating to combating counterfeit and infringing goods.” The PRO-IP Act directed the IPEC to submit to Congress a Joint Strategic Plan for such coordination of IP enforcement. That plan was completed and submitted in June 2010.
The plan includes 33 proposals to strengthen enforcement of intellectual property rights. Notably, two of these proposals are directed to enhancing Section 337 enforcement of IP rights. One of these proposals calls for the sharing of exclusion order enforcement data with patentees. The report notes that more robust information sharing between CBP (Customs and Border Protection) and rightholders would enhance CBP’s effective enforcement of exclusion orders, as well as provide transparency to rightholders. The U.S. Government will seek changes to provide CBP with the authority to share enforcement data with complainant rightholders, including denials of entry, seizures pursuant to seizure and forfeiture orders and determinations pursuant to an ITC exclusion order.
The plan also calls for new procedures to enhance communications between the ITC, CBP, and patentees as to the scope of ITC exclusion orders, particularly with respect to whether redesign products are within the scope of an exclusion order. On this point the IPEC Report recognizes that after an ITC case is adjudicated and after an exclusion order is issued, CBP is frequently faced with questions as to whether redesign products are within the scope of an exclusion order. This is essentially a determination of patent infringement, and in particular, a question of whether a redesign is covered by the scope of a patent claim listed in the exclusion order. The plan notes in this regard that “Because the parties involved in the original ITC investigation can provide useful information related to the scope of the intellectual property rights being adjudicated, any determinations subsequent to the issuance of an ITC exclusion order should involve the parties and, where appropriate, the ITC.” The plan proposes as a “possible solutions” the development of inter partes proceedings that will involve relevant private parties to the ITC investigation.
The IPEC’s plan enhance Section 337 enforcement should come as welcome news to patentees. Although the plan does not presently include details, it demonstrates that the federal government continues to treat Section 337 as a priority mechanism for the effective enforcement of IP rights and that the federal government is committed to finding ways to work with patentees to provide such effective protection at the border.