International Trade Commission (ITC)
The International Trade Commission (ITC) Group at Brinks Hofer Gilson & Lione represents a range of clients before the U.S. International Trade Commission. With the globalization of corporations, new technologies and increasing international competition, holders of intellectual property rights are increasingly turning to the ITC for its accelerated procedures and powerful remedies. The ITC Group at Brinks uses a team approach to offer clients a unique combination of legal and technical expertise in these often complex and specialized proceedings.
International Trade Commission
The ITC is a quasi-judicial Federal agency that functions much like a specialized court. Section 337 of the Tariff Act of 1930 empowers the ITC to investigate complaints brought by owners of U.S. intellectual property. The majority of these proceedings involve intellectual property owners who seek to stop importation of products that infringe their U.S. patents, trademarks or copyrights. The ITC provides a forum for U.S. and foreign corporations to address claims of patent, trademark or copyright infringement by imported goods, unfair competition related to imported products, misappropriation of trade secrets or trade dress, false advertising and antitrust issues.
Resolving disputes in the ITC offers several key advantages. Having its own special rules and procedures, the ITC is an attractive forum for those searching for relief that may not be available in the district courts. Any company, regardless of its domicile, that imports products or sells imported products in the U.S. faces the possibility that it will be named as a respondent in a Section 337 proceeding in the ITC. Effective injunctive-type relief is available to those companies, regardless of domicile, whose rights have been infringed by those importing products or selling imported goods in the U.S.
While similar to district court proceedings, litigating in the ITC presents a unique set of challenges that requires skilled attorneys who know how to navigate the complex procedural rules, as well as the substantive areas of the law. Having experienced litigators with undergraduate and advanced technical and scientific degrees - nearly all of whom are registered members of the U.S. Patent and Trademark Office - the ITC Group at Brinks has the technical experience necessary to understand patented technology and products. When necessary, the ITC Group partners with the firm's scientific advisors to provide additional expertise in complicated technical areas.
The majority of investigations under Section 337 involve alleged patent infringement. These cases require a strong command of patent law. The ITC Group at Brinks has decades of patent experience, both in the U.S. and abroad. Its members also include attorneys and scientific advisors who are fluent in multiple languages and have been trained in patent law in China, Korea and Japan. The ITC Group also draws experience from the firm's other practice groups in order to successfully argue cases under Section 337. These groups include biotechnology/pharmaceutical, electrical, mechanical, nanotechnology, copyright, and trademark, unfair competition. In addition, litigation paraprofessionals and support staff with ITC experience assist each team in efficiently managing document collection, filings and case coordination. Many ITC proceedings have parallel district court cases, and our attorneys are experienced at handling both types of proceedings.
The Advantages of Choosing the ITC Over the District Court:
The ITC has become a favorable option for resolving infringement disputes due to its expedited time schedule and availability of remedies. The ITC operates with unique rules and procedures that often result in a faster determination and can provide immediate consequences for importers, manufacturers and sellers of infringing products.
It is important to understand how Section 337 actions differ from district court actions:
- In Rem Jurisdiction. The ITC has in rem jurisdiction over goods imported into the U.S., unlike district court proceedings which require the presence of the parties. A complainant can file a request for an investigation even if the importer, seller or consignee is unknown. This allows for the opportunity to address infringement claims by multiple parties and products in a single forum without jurisdictional disputes, especially over foreign parties. The ITC also has nationwide subpoena powers and sanctions available against respondents who fail to comply with discovery.
- Domestic Industry. The ITC is charged with protecting U.S. industry. Its focus is to provide swift, effective relief against infringing imports that adversely affect U.S. commerce. As a result, only patent owners that make use of the patent (directly or through licensing activities) in the U.S. can request that the ITC initiate an investigation.
- Public Interest. After a complaint is filed, the ITC assigns an investigative attorney from the Commission's Office of Unfair Import Investigations (OUII) to examine the complaint for sufficiency and compliance. The investigate attorney is a full party to the investigation, functioning as an independent litigant who represents the public interest in the litigation.
- Speed. The ITC provides an attractive option for IP owners seeking a quick remedy against infringing imports. Discovery takes place in a matter of months, and the parties can expect a hearing on the merits before an administrative law judge (ALJ) in approximately nine months from the initiation of the investigation. The ALJ usually issues an initial ruling, referred to as an initial determination, about three months after the hearing. The ITC may review the initial determination, but the process is generally completed within 15 months of initiation.
- Relief. The ITC will issue relief in the form of an exclusion order that bars importation of the infringing product. The U.S. Customs and Border Protection enforces the ITC's exclusion orders by prohibiting entry at the U.S. border of excluded imports. The ITC may also issue cease and desist orders to prohibit the sale or distribution of imports which are already in the U.S. However, unlike in district courts, monetary damages are not available.
Section 337 cases involve the full range of proceedings found in other courts, but include the additional challenges of dealing with parties from around the world. The ITC Group at Brinks has a diverse staff, familiar with the latest technological applications and procedures, as well as a considerable amount of experience working with foreign entities. Combining comprehensive knowledge, trial experience and technological backgrounds, we can successfully serve the needs of clients before the ITC.