The Counterfeit Goods Seizure Act of 2019 aims to close a loophole in the current law and provide U.S. Customs the authority to seize counterfeit goods infringing design patents.

On December 5, 2019, the bi-partisan sponsored Counterfeit Goods Seizure Act of 2019 (the “Act”) was introduced. The Act would amend 19 U.S.C. § 1595 to empower U.S. Customs and Border Protection the discretionary authority to seize goods that infringe U.S. design patents at the U.S. border. Presently, § 1595 only provides U.S. Customs the authority to seize counterfeits infringing trademarks, trade names, and copyrights.

The Act comes as counterfeiters are becoming more sophisticated and are able to take advantage of the loophole in the current law to skirt U.S. Customs by importing counterfeit goods without the labelling that would trigger a seizure for trademark or copyright infringement. More generally, the Act would also expand the breadth of counterfeit goods that U.S. Customs can seize, including potentially hazardous counterfeits such as personal hygiene items containing contaminates and consumer electronics that may fail when in use.

Next steps for businesses

The Act has received strong support from intellectual property organizations and businesses, and would bring the U.S. in-line with other countries already protecting designs by having mechanisms in place at their borders to prevent the entry of infringing goods. Given the likelihood that the Act will pass, companies and businesses should, if they have not already, consider design patent protection in addition to their current IP protection, as an efficient and cost-effective mechanism to prevent the importation of counterfeit goods into the U.S.