May 22, 2025 | By: Anna Kinney and Daniel Finnegan
Congratulations on being awarded a patent in the United States! If someone infringes on your patent, you can pursue litigation for damages or an injunction. Or you can opt for non-litigation options like sending a cease-and-desist letter or negotiating a licensing agreement. Dunlap Bennett & Ludwig can assist you. For more information, read Navigating Patent Infringement: Do I Need an Attorney? or visit our Patent Disputes Page.
Using the ITC to Stop Patent Infringement
If the infringer is outside the U.S., the U.S. International Trade Commission (ITC) can be very helpful. Founded in 1916 as the Tariff Commission, the ITC is an “independent, nonpartisan, quasi-judicial federal agency” that investigates imports under the Tariff Act of 1930 that harm domestic industries or violate U.S. intellectual property rights. The ITC cannot order damages but can issue exclusion orders, enforced by Customs, to prevent infringing imports from entering the U.S. General exclusion orders can be issued when there are many manufacturers of infringing products or when the source is hard to identify. The ITC may also issue cease-and-desist orders for products already imported. Alternatively, parties may settle.[i]
Advantages of ITC Over Federal District Court
Cases can be pursued in both the ITC and Federal District Court simultaneously. The ITC offers several advantages:
- Injunctive Relief: Following a 2006 Supreme Court decision, obtaining injunctive relief (i.e., a court order that compels someone to stop infringing a patent) through District Courts is challenging due to a required four-factor test. The ITC does not need to meet this test, making it an attractive route for injunctions.[ii]
- Speed: ITC trials typically last 8-10 months, much quicker than district court litigation, which can take several years. The ITC does not stay proceedings based on inter partes review (IPR) petitions, which can delay district court cases by at least 12 months. Despite the shorter timeframe, ITC proceedings can be as costly as District Court litigation.
- Service of Process: Unlike federal district courts, which require the patent owner to serve (officially deliver legal documents to) the foreign manufacturer, the ITC contacts the respondent through their home country’s embassy.
- Process Claims: The ITC can be particularly helpful in enforcing patents with process claims, without having to meet all the tests required in federal district court. For example, in the case of “Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof,” the ITC found that a manufacturer infringed a patent for a process of making an intermediate chemical used in Sucralose without having to prove that the intermediate chemical was not materially changed before importation and did not become a trivial component of the imported product, which is required in federal court pursuant 35 USC Section 271(g).[iii]
Eligibility Requirements for Using the ITC
Not all patent owners are eligible to use the ITC. To file a Section 337 complaint:
- An infringing product must be imported or potentially will be imported into the U.S.
- Infringement of a valid U.S. patent, copyright, or trademark must occur.
- A domestic company must engage in sufficient domestic activity related to the imported product, such as investment in plants and equipment or employment of labor and capital.
The domestic industry requirement can limit ITC access if the patent owner manufactures overseas. The ITC tends to disfavor cases relying mainly on sales and marketing investments, though recent court cases may expand the types of investments that meet the requirements.
Design-Arounds and Exclusion Orders
Even after an exclusion order is issued, respondents often develop a “design-around” to produce non-infringing products, which the Commission can certify. Customs can quickly determine if a product is subject to an exclusion order and issue a ruling under Part 177 of the CBP Regulations (19 C.F.R. Part 177). Appeals of exclusion orders can be made to the Federal Circuit. Broad patent claims reduce a competitor’s ability to design around your patent. For assistance with patent claims, contact Dunlap Bennett & Ludwig.
For more information on obtaining patents, visit Dunlap Bennett & Ludwig’s website at https://www.dbllawyers.com/practices/intellectual-property/patents/ or contact us at 800.747.9354.
[i]https://www.usitc.gov/; https://ipwatchdog.com/2024/08/19/strategic-importance-itc-patent-owners/id=180219/
[ii] eBay Inc. v. Mercexchange, LLC, 547 US 388 – Supreme Court 2006.
[iii] Harris, M. H., Len, G. D., Tawresey, G., & Ferzacca, D. N. (2022). Intellectual Property Technology Law Journal. Power, 34(4), obtained from https://www.troutman.com/a/web/309207/Intellectual-Property-Tech-Law-Journal-April-2022-The-Power.pdf.
