A Beginner's Guide to Unfair Import Investigations in the U.S.

The first step in obtaining import exclusion protection for trademarks, tradenames, and copyrights in the U.S. is to record registrations with the Customs and Border Protection service ("CBP"). Import exclusion protection for patented items, on the other hand, may be obtained only after the U.S. International Trade Commission has completed an "Unfair Import Investigation" and recorded its own "exclusion order" with CBP.

In essence, so-called "Section 337 investigations" are administrative proceedings before the U.S. International Trade Commission to determine whether the Customs Service should be directed to excluded infringing goods from importation into the U.S. Most trademark and copyright infringing imports can be stopped by working directly with the Custom Service, without having to obtain an exclusion order from the ITC, as discussed here. Consequently, most Section 337 investigations involve patent infringement allegations.

The law and administrative procedures for these investigations are very similar to the "civil procedures" that are used to decide patent infringement allegations in the federal courts. However, parties to these investigations include "complainants," "respondents," and the ITC "staff" attorney representing the public interest. Section 337 investigation also tend to proceed more quickly than civil lawsuits.

Following an evidentiary hearing, the Administrative Law Judge (or "ALJ") will issue an "initial determination" on all issues related to violations of section 337, usually within about 10 months from when the complaint was filed. The Commission may then review, adopt, modify, or reverse the ALJ's decision. If the Commission does not review the initial determination, it becomes the ITC's decision. You should also know that the ITC is authorized to grant only import exclusion orders, and cease and desist orders. Money damages are not awarded to the prevailing party. ITC orders are effective when issued and become final 60 days after issuance unless disapproved for policy reasons by the President of the United States within that 60-day period. Appeals of ITC determinations may be taken to the U.S. Court of Appeals for the Federal Circuit. Violators of ITC section 337 orders are liable for civil penalties of up to $100,000 a day or twice the value of the imported articles, payable to the government.

The cost of a Section 337 action is generally the same as an infringement action before the federal courts. However, since most Section 337 investigations are typically completed within twelve months, those cost can be compressed into a relatively short period. Furthermore, the ITC's rules require such detailed complaints that the initial preparations can cost $10,000 - $20,000, or more. Of course, we can give you a much better estimate of the initial costs once you become a client of the firm.

A copy of my June 2002 APLF Roundtable presentation on "Unfair Import Investigations at the U.S. International Trade Commission" is available on the Internet via the Association of Patent Law Firms at http://www.aplf.org/events/roundtables/2002-06-20.shtml. Official information on "Understanding Investigations of Intellectual Property Infringement and Other Unfair Practices in Import Trade" is available from the ITC at http://www.usitc.gov/us337.htm, including "Answers to Frequently Asked Questions" at ftp://ftp.usitc.gov/pub/reports/studies/PUB3516.PDF. "An Overview of Section 337 Actions in the ITC" is available from another law firm here.

As a former Staff Attorney with the Office of Unfair Import Investigations at the U.S. International Trade Commission, I have worked on numerous Section 337 investigations. I am also supported at my firm by a dedicated and experienced patent litigation group. Please feel free to call us if we can provide you with any additional information. I would also be pleased to deliver my ITC presentation, in person, to you, your client, and/or your colleagues in person if they should decide to retain our services.

Information on European "border measures" for import exclusion is available here and here.