How patent holders can make use of border protection

Customs protection and border measures are tools familiar to trademark and copyright holders and are commonly used against counterfeit or pirated goods; however, they are often underestimated in patent matters. Patent holders are reluctant to include customs authorities in their IP enforcement strategies, as patent cases are usually more complicated and need more developed tools in order to establish infringement. But customs procedures are not as complicated and as patent unfriendly as they may appear. This chapter illustrates how patent holders can benefit from customs protection in Poland in order to strengthen their patent enforcement programmes and limit imports of infringing goods.

The EU Customs Regulation (608/2013), which repealed EU Regulation 1383/2003, makes the enforcement system more robust. Under the Customs Regulation, a patent holder may initiate a procedure which entitles Customs to seize goods suspected of infringing patents and other IP rights at the EU borders. Since Poland forms the eastern border of the European Union, customs protection in Poland merits careful consideration.

Establishing customs protection

In order to establish customs protection in Poland, a patent holder must file an application to take customs action based on a patent that is valid in Poland. There is no official fee or deposit for establishing customs protection; however, the patent holder must sign an undertaking to bear the costs of the proceedings. Customs protection is granted for a maximum of one year and can be extended for one further year at the written request of the patent holder.

In order for a border detention programme to be effective, the patent holder must provide Customs with information that can be used to distinguish between original and infringing products. The application form requires the patent holder to submit specific and technical data on the authentic goods – including markings such as barcodes and images, where appropriate – as well as information needed to enable Customs to identify the infringing goods easily or information relevant to Customs’ analysis and assessment of the risk of infringement (eg, authorised distributors). If shared with Customs, information about alleged infringers and infringing products can make border protection more effective. The Polish Customs Service has a specialist unit to handle risk analysis and management, which collects data and communicates to the relevant customs offices which shipments should be cross-checked. Therefore, the higher the quality of the information that Customs receives from the patent holder, the better the results that can be obtained.

It is also highly recommended to conduct training sessions for customs authorities. The patent holder can use the training to explain details of its IP rights to Polish customs officers, thus drawing their attention to the patent rights as the basis for the customs protection programme.

Initiating border detention proceedings

From the patent holder’s point of view, the detention procedure starts from the date or which it receives information about the detained shipment that is suspected of infringing its patent. When products suspected of infringement are detained at the Polish border, the patent holder or its representative (who can be appointed in the customs protection decision) and the owner of the seized goods are notified of the detention. Within 10 working days of the detention – extendable for a further 10 working days – the patent holder must commence legal action against the alleged infringer and inform Customs that the proceeding has been initiated. If no action is taken, the goods are released (with some exceptions for small consignments as described below).

As there are only 10 working days to act, it is necessary to do so quickly and accurately. Therefore, any necessary preparations for possible legal action should be undertaken before a request for customs protection is filed. The complexity of patent infringement cases and the short time available to prepare a lawsuit require that the border detention programme be prepared thoroughly before requesting customs protection – for example, by:

• contacting technical experts;
• appointing technical laboratories or institutes to examine product samples; and
• drafting document templates.

The first step after detention is to request additional information about the detained goods and the parties involved in the allegedly infringing shipment. At the patent holder’s request, Customs will provide information identifying the parties involved and samples of the detained goods. Customs shall inform the patent holder of the actual or estimated quantity and the nature of the goods, including images thereof, if appropriate. Customs shall also, on request and where available, inform the patent holder of:

• the names and addresses of the consignee, the consignor and the declarant or holder of the goods;
• the customs procedure; and
• the origin, provenance and destination of the detained goods.

The information provided by Customs may be used by the patent holder strictly for analysis and to facilitate the subsequent procedure relating to the detained goods. This valuable information is the crucial advantage of the border detention system. The allegedly infringing goods are detained, the parties involved are identified and the patent holder is sent samples of such goods – and all the had work is done by Customs. This is in stark contrast to standard patent enforcement cases in Poland, where the burden of collecting evidence rests on the rights holder.

Simplified procedure

Once the goods have been seized, the most economical way of handling the detention is to carry out the simplified procedure, which results in destruction of the infringing goods without going to court. In the simplified procedure, goods suspected of infringing a patent right may be destroyed under the control of Customs, without the need to determine whether the patent has been infringed under Polish law. In order to avail of the simplified procedure:

• the patent holder must confirm in writing to Customs, within 10 working days of notification of the detention of the goods, that in its view, the patent has been infringed and that it agrees to the destruction of the goods; and
• the declarant or holder of the goods must confirm in writing to Customs, within 10 working days of notification of the detention of the goods, that it agrees to the destruction of the goods.

If the declarant or holder of the goods has neither confirmed that it agrees to the destruction of the goods nor notified its opposition to destruction to Customs within the specified deadline, Customs may deem the declarant or holder of the goods to have agreed to destruction of the goods.

In practice, the simplified procedure, with its ‘implied’ consent to destruction, may be difficult to apply and more troublesome than expected – especially in patent cases. Even though the simplified procedure is no longer optional and must be adopted in Poland, Polish Customs is reluctant to use these provisions as the sole basis for destroying goods. Customs still requires explicit written consent for the destruction, signed by the owner of the goods, and a separate motion for destruction based on national law. The historic reason for this unusual practice is the former EU Regulation 1383/2003, which allowed for some freedom in implementing the simplified procedure. However, practice and jurisprudence will show how the implied consent for destruction should be interpreted and how the simplified procedure will be applied.

Court proceedings

If the simplified procedure is blocked by the owner of the goods explicitly opposing the destruction or failing to give written consent for such destruction, the only way for the patent holder to ensure that the goods are detained and eventually destroyed is to initiate court proceedings. If the patent holder does not bring an action within the specified timeframe and consent for destruction is not given, the goods will be released. In Poland, only civil actions can be taken into account, as no criminal measures are provided for patent infringement. In a patent infringement proceeding it is crucial to provide evidence proving the infringement with respect to the goods detained. Any examination of the samples submitted by Customs shall be carried out under the sole responsibility of the patent holder. Therefore, having established a border detention programme for a patent in Poland, the patent holder must be ready to examine samples received from Customs at short notice. Finding a competent expert at reasonable cost may be the hardest part of the job – particularly in case of patents concerning high technology; thus, it should not be left until the last minute. Further, private expert evidence alone is insufficient evidence to prove patent infringement. According to Polish case law, private technical expert evidence is considered to be a private document and a part of the patent holder’s arguments. However, filing technical expert evidence may be advantageous, especially when requesting an interim injunction. Notwithstanding the evidence provided by the patent holder, in patent infringement cases it is necessary to ask the court to appoint a technical expert to examine the infringing products and explain technical issues to the court during infringement proceedings.

Business intelligence

As well as being ready to examine samples of the detained goods for the purposes of commencing patent infringement proceedings, the patent holder should be prepared to go a step further and investigate the parties involved. For example, it should assess the alleged infringer’s position on the Polish market, its distribution channels and warehouses and its legal and commercial connections. Business intelligence also helps to classify the target of the legal actions and to decide which measures are appropriate for the size of the infringement. This may result in savings, as it may prevent the patent holder from taking overambitious or inadequate action. For example, if business intelligence shows that the position of the infringer involved in a seizure is potentially more serious than was first apparent, the patent holder may first request injunctive measures to increase pressure on the infringer and then initiate regular civil proceedings within the timeframe specified by the court in the injunction order. Considering and preparing for possible scenarios can be helpful in order to adapt flexibly to a new or changing situation, particularly in border detention cases which require quick and efficient action.

Small consignments

At the other end of the border detention spectrum are small consignments – that is, cases which are not worth escalating. ‘Small consignments’ are defined as postal or express courier consignments which either contain three units or fewer or have a gross weight of less than 2 kilograms. Pursuant to the new Customs Regulation, a special destruction procedure has been introduced for small consignments. This does not require the patent holder’s consent or involvement, provided that the patent holder has requested the use of such procedure in the application for border protection in Poland.

Comment

A well-established border protection programme is vital for the enforcement of patent rights in Poland, as it can reduce imports of infringing goods and thus strengthen and secure the position of patent holders. Hence, when considering border measures, patent holders should see them as a part of a comprehensive plan for all EU member states, rather than standalone enforcement actions. They can be the perfect tool to support patent enforcement and licensing programmes.

IP&Law – Kancelaria Rzeczników Patentowych J Markieta, M Zielińska-Łazarowicz Sp p

ul Wańkowicza 5A lok 23

02-796 Warsaw

Poland

Tel +48 22 254 25 35

Fax +48 22 254 25 34

Web www.ipandlaw.com

Jarosław Markieta

Partner

[email protected]

Jarosław Markieta is a European and Polish patent attorney. He graduated cum laude from the Faculty of Electrical Engineering at Warsaw University of Technology, where he specialised in automation and robotics. Mr Markieta specialises in patent prosecution, but also conducts invalidation and enforcement actions. His specific field of interest is the implementation of licensing systems for the use of patented technologies in Poland. He represents clients before the Polish Patent Office, the European Patent Office and the administrative and civil courts. Mr Markieta also cooperates with customs authorities in respect of border seizures. He is an active member of the International Association for the Protection of Intellectual Property, the International Trademark Association and the Polish Chamber of Patent Attorneys.