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ITC Revises Rules on Conduct of IPR Infringement Investigations

Friday, April 19, 2013
By Shawn McCausland
Sandler, Travis & Rosenberg Trade Report

The International Trade Commission has issued a final rule that, effective May 20, will amend its rules of general application, adjudication and enforcement, particularly with respect to the conduct of Section 337 intellectual property rights infringement investigations. The ITC states that these amendments are necessary to make certain technical corrections, clarify certain provisions, harmonize different parts of the rules and address concerns that have arisen in ITC practice. The intended effect is to facilitate compliance and improve the administration of agency proceedings.

Specific changes concerning Section 337 investigations include the following.

- The complainant will have to (a) plead with particularity whether it alleges a domestic industry that exists or a domestic industry that is in the process of being established, (b) specify if it is requesting a general exclusion order, a limited exclusion order and/or cease and desist orders, and (c) identify the accused products with a clear statement in plain English (which will not be included in the notice of investigation, as proposed).

- To address the filing of substantial amendments to Section 337 complaints during the pre-institution review period, which has become increasingly common and places significant burdens on the ITC as well as respondents, any significant amendment to a complaint prior to the institution of an investigation will restart the normal 30-day process for determining whether to institute the investigation.

- Regulations on the termination of investigations by consent order will be clarified by providing that consent order stipulations must include a statement identifying the asserted intellectual property right or unfair trade practice that is the basis for the alleged violation of Section 337 and whether the stipulation calls for cessation of importation, distribution, sale or other transfers (other than exportation) of subject articles in the United States and/or specific terms relating to the disposition of existing U.S. inventories of subject articles.

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