The Protection of Intellectual Property at the ITC through Section 337

Authored by Donald Dinan, Partner at Roetzel & Andress

This chapter will cover Section 337 of the Tariff Act of 1930 which is administered by the U.S. International Trade Commission (“ITC” or the “Commission”) and how it can assist U.S. companies in protecting against imported goods. Section 337 prohibits unfair acts and unfair methods of competition in the importation of goods into the United States. It primarily addresses imported goods which infringe U.S. patents, trademarks or copyrights.

This chapter will describe in detail Section 337 and when one should consider utilizing it. It will analyze the differences between the ITC and Federal District Court litigation in defending intellectual property rights and the advantages and disadvantages of each forum.

The practice and procedure before the ITC, which enforces Section 337, will be discussed in detail. The stages of litigation before the Commission will be gone through including: motions practice, discovery and the conduct of the trial in the case before an Administrative Law Judge (“ALJ”). The remedies, their enforcement and their effectiveness will be analyzed. The appeals process will likewise be covered.

The chapter will contain answers to some of the most frequently asked questions about Section 337 practice. It will also have three case studies that show the effectiveness of the statute in three different types of unfair trade competition, and how Section 337 can be used to combat a number of different types of unfair competition, and prevent infringing goods from entering the United States.

The focus of this chapter will be less on the traditional litigation risk analysis but rather more on how one can use Section 337 and the ITC to protect one’s intellectual property. The emphasis will be that of international economic law where one seeks a predetermined economic result and then attempts to achieve that result through law. The Chapter will discuss how a firm can protect its products against foreign competition and strategically position itself in the global marketplace.

A word about Commission terminology. Like all trade statutes, Section 337 is replete with its own jargon. Technically, cases under Section 337 are known as “investigations” rather than cases, though in common use both terms are used interchangeably as they will be in this chapter. Also, the statute refers to the importation of “articles”. Again, the terms “goods” and “products” are used interchangeably in common usage. Trials before the Administrative Law Judge are called “hearings”. Plaintiffs are referred to as “Complainant’s” and Defendants are referred to as “Respondents”. Likewise, “remedies” are referred to as “relief” and Commission “decisions” are “determinations”.