Call for Comments on IP Enforcement

Posted by on July 31, 2012

By Nancy C. Prager, Esq.

The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (the “PRO-IP Act”) enhanced civil and criminal penalties for intellectual property infringement.It also established the Intellectual Property Enforcement Coordinator to serve in the Office of Management and Budget at the White House.

The Intellectual Property Enforcement Coordinator has been charged with overseeing, and contributing to, the development and implementation of the Joint Strategic Plan, an inter-agency plan to combat intellectual property counterfeiting and infringement.

The first Joint Strategic Plan, published in 2010, focused on
(1) the government leading by example, through a policy of not purchasing or using infringing products;
(2) increasing transparency in communication and policy making related to intellectual property rights and enforcement;
(3) ensuring efficiency and coordination between agencies and with state and local governments;
(4) enforcing rights internationally;
(5) securing the supply chain; and
(6) building a data-driven Government.

However, Congress recognized that plans to combat intellectual property infringement would need to evolve over time. Therefore it required that the Joint Strategic Plan be revisited every three years. In preparing for the next Joint Strategic Plan, Victoria Espinel, the Intellectual Property Enforcement Coordinator, has requested input from the general public to create a strategy that is “forceful yet thoughtful, dedicated and effective, and that makes good and efficient use of our resources.” Ms. Espinel has stated that “who better to play a key part in shaping the new Strategy than you, the American people.”

Initially, Ms. Espinel seeks specific recommendations from the public regarding the Federal government’s intellectual property enforcement efforts. The recommendations may address any issue related to intellectual property and call for responses ranging from legislation and regulation to changes to practice. Each recommendation, however, should include:
1) a detailed description that states the issue;
2) a solution; and
3) identify the agencies responsible for implementing the recommendation.

Additionally, to obtain specific information, Ms. Espinel has requested feedback to a series of questions which address the issues the Joint Strategic Plan should cover. The scope of the questions is broad, ranging from cooperation between the private and public sector for intellectual property enforcement to steps that the U.S. Customs and Border Protection can take to improve the e-recordation system. Significantly, the Coordinator has requested input on authentication tools and track and trace technologies that the federal government could use to identify counterfeit or pirated goods.

Members of the licensing community have a valuable perspective on the issues about which Ms. Espinel seeks comments. From monitoring factories in China and other foreign countries to working with Customs in the U.S. and other countries, licensors and licensees have the practical experience Ms. Espinel needs to consider when preparing the Joint Strategic Plan. There is no single way to write comments. They can range from 50-page formal proposals to informal responses that are only a few paragraphs long (see examples from the 2010 process at http://www.whitehouse.gov/omb/intellectualproperty/frn_comments/)

Here are some easy steps to follow if you would like to file comments in response to Ms. Espinel’s request:
1) Read the Request for Public Comments which can be found at http://www.whitehouse.gov/sites/default/files/docs/jsp_2013_frn_final.pdf.
2) Follow the formatting and delivery instructions provided in the Notice.
3) Identify the issues on which you are commenting.
4) State your credentials in the licensing industry (licensor, licensee, attorney, etc.) and address the issues from your experience.
5) Indicate whether you are responding as an individual or from an official capacity for an organization or company. If you are provide some information about the organization and its interest in the issue.
6) Provide real-world examples in your response based on your experience in the licensing industry.

Comments are due by 5 p.m. on August 10.

Nancy C. Prager is a Washington, DC-based attorney who provides strategic legal services to clients in industries ranging from consumer electronics manufacturing to magazine and music publishing. She has significant experience representing clients throughout the licensing lifecycle, including license and manufacturing agreements, consumer protection compliance, and intellectual property protection, exploitation and enforcement. She can be reached at nprager@pragerlaw.us or (202) 725-6095.