Protecting Your American Intellectual Property Rights: How Foreign Companies Can Utilize The United States International Trade Commission and Section 337 Investigations

Abstract

You are the in-house counsel for a company based in Taiwan, TV’s Inc., that specializes in the creation of innovative and new technologies for televisions, and the production of televisions that utilize those technologies. As part of your company’s business plan it has applied for and has been issued a number of U.S. patents. One day, while you are on a business trip in the United States to meet with one of your retailers, you see a commercial advertising a handheld television that seems to utilize technology that is covered by one of your company’s U.S. patents. After some further research, you discover that the product you saw in the advertisement does in fact use the technology that your company has patented and that the product is being sold all over the United States. You also discover that the handheld television is manufactured by an American company that has the televisions manufactured in Mexico and then shipped into the United States for sale. After you arrive back in Taiwan, you decide you have to take immediate action against the American company. You know of other companies that have tried to solve infringement problems in the U.S. by suing the infringing company in United States District Court. However, you also know that cases brought in district courts often drag on for years, ensuring a costly legal battle. You wonder if there are any alternatives to district court that may better serve your company’s goal of either quickly reaching a licensing agreement with the American company or ensuring that the infringing products are no longer sold in the United States. As you are researching your options, you come across something called the United States International Trade Commission (“ITC”). You remember hearing about the ITC, but it always seems to be in the context of an American company suing a foreign company for patent infringement. You have friends in other industries who have had their products banned from being imported into the United States, so you don’t believe the ITC will be of any help to you. However, after some more research you discover that some non-American companies have brought actions before the ITC as well. They have even used the ITC to bring investigations against American companies! How is this possible you wonder? This article will answer that very question. It will explain how foreign companies that own U.S. patents can utilize the ITC as part of their intellectual property arsenal and explain why they should be proactive in utilizing this forum and its unique remedies.