Companies doing business in foreign countries or competing with products from other countries are frequently presented with competitive situations in which their intellectual assets can be enforced at various countries borders to prevent imports of infringing/competing products. Various internationally accepted procedures provide for the protection of registered rights, the prevention of unfair trade practices, and the implementation of international agreements negotiated under the World Trade Organization (WTO). National and international forms offer recourse in protecting intellectual assets, limiting imports, and utilizing legal regimes to achieve company objectives. To navigate these forms most effectively specially qualified counsel offers the best guidance.
The decision to develop intellectual asset border enforcement efforts requires a suitable plan of offense/defense. Various strategic and tactical elements must be considered in deciding the appropriate steps to be taken. These are similar to the elements described for domestic enforcement and include: assessing the strength of the intellectual asset; deciding which intellectual asset to assert; assessing the strength of the opposing party’s case; determining if other anticompetitive/regulatory avenues are available; gathering information about the opposing parties imports and sales; reviewing internal documents for evidence; assessing the status of the product and the relevant industry; preparing company personnel for litigation; and deciding on enforcement specifics.
The appropriate countries and forms available for border enforcement efforts are determined by both the type of intellectual asset involved in the type of border enforcement mechanism suitable for the company strategic purposes. Patent, trademark, copyright, and other unfair act enforcement efforts can be conducted before the US International Trade Commission in the United States, and parallel District Court or foreign actions may be coordinated with a worldwide enforcement plan. The use of the US Customs Service for border enforcement of trademarks and copyrights in the United States and parallel customs enforcement efforts in other market areas are available. In addition enforcement of various trade laws and obligations established under the auspices of the WTO are available through the WTO dispute resolution process.
In any of these border enforcement efforts, cost-effectiveness is a major concern. The ability of special counsel to utilize enforcement dollars effectively is key the development of a successful strategy. This is accomplished by keeping the company’s business objectives in mind so that enforcement efforts are aligned with other aspects of the business.