Some years ago, I reviewed a book about patent office administration, a topic even the book’s author considered “excruciatingly dull”.1 As such, I had low expectations for the book but was delightfully surprised by how engaging it was. I have experienced déjà vu with Jorge L. Contreras’ short article, The Role of U.S. Customs and Border Protection in Enforcing Intellectual Property Rights. An article on a topic that I would have expected to be boring in fact was quite enlightening in important ways and a pleasure to read.
I may not be alone among Intellectual Property (IP) law scholars in acknowledging a lacuna in my knowledge of IP enforcement at the U.S. border. For many of us, the topic may surface in course discussions about, inter alia, the benefits of federal trademark registration on the principal register or litigation at the International Trade Commission (ITC), but border enforcement is seldom explored in any depth.
Professor Contreras’ concise yet engrossing piece largely fills this gap. His discussion of the interplay between the treatment of different forms of IP, the different sources of jurisdiction and enforcement authority, and different actors (IP owners, importers, the ITC, district courts and US attorneys) is fascinating, and far more complicated than I previously realized.
Professor Contreras begins by situating the historical importance of the Customs and Border Protection agency (CBP) — or Customs Service as it was called when established in 1789 — as one of the first (and for a time the largest) federal agencies. It once accounted for 95% of US government revenue in the mid-1800s. He deftly explains the distinctions between CBP and a different and more controversial Department of Homeland Security (DHS) agency, Immigration and Customs Enforcement (ICE), and the complex network of CBP offices and functions. Some of CBP staff report through DHS, while others report to the Department of the Treasury.
Professor Contreras also provides an interesting history of the evolution and expansion of the ITC and its role in IP rights adjudication and enforcement. The article is chock full of insights that paint a surprising (and encouraging) picture of CBP’s IP actions and expertise. Preventing the importation of articles that infringe U.S. IP rights is a core function of the CBP under its trade enforcement mission, but this agency also has counterterrorism and border security responsibilities. In 2024 it seized more than 30 million infringing handbags, clothing, counterfeit pharmaceuticals, and other articles.
Yet, as Professor Contreras notes, the CBP has been little studied and is often dismissed as a policing body that lacks sophisticated IP expertise. The article’s discussion of the actual IP activities of CBP is quite extensive. Consider the following:
- Before seizing goods at the border, CBP must generally assess whether the goods infringe a duly registered copyright or trademark, or violate an exclusion order (issued by the ITC) or court injunction relating to patent or other IP infringement. It often needs to respond to objections to seizures and or/defend its seizure decisions. This can entail further investigations of the alleged infringement.
- CBP often meets with parties to an ITC action to discuss the scope and execution of an exclusion order and to discuss with respondents design-around possibilities that may avoid infringement. In addition, the ITC may grant CBP the authority to unilaterally permit products deemed to be successful design-arounds to be imported.
- CBP headquarters employs patent attorneys to assist with infringement determinations, both literal and under the doctrine of equivalents.
- CBP conducts Rule 177 inter partes proceedings in which a respondent may seek and obtain a pre-import ruling, on an expedited basis, that goods do not infringe. These rulings are available to the public and, of course, require the exercise of IP infringement expertise.
- The CBP must also address substantive infringement issues in formal protests filed by importers, and challenges can be heard and decided on an inter partes basis at the discretion of the CBP.
- CBP also has laboratories and conducts chemical, physical, electrical and other tests to assess infringement. CBP also often invites patent holders to provide infringement training and instruction to its officers.
- Moreover, the Federal Circuit has rejected the notion that CBP lacks the expertise to adequately enforce exclusion orders (which involves assessing infringement).
These activities suggest that CBP is capable of engaging in sophisticated infringement assessments, discussions, negotiations, and adjudications across a range of IP areas and products. They may not always get it right, but that is true of the ITC and courts as well. However, shedding light on the range of CBP tools, resources, and activities as Professor Contreras has done certainly creates the opportunity for a different narrative regarding the agency’s expertise.
After reading this article and further exploring some of its contentions, I have gained not only a greater knowledge of the IP enforcement work of the CBP, but also an enhanced appreciation for the ability of the CBP to engage in savvy technical and legal assessments of IP infringement at the border. We should all be grateful to Professor Contreras for writing this accessible and illuminating article on the IP activities and acumen of the CBP and I highly recommend it to anyone who has ever had questions about the functions of this critical agency.
