On February 23, 2015, the ITC announced a pilot program aimed at providing more efficient determinations on the scope of exclusion orders.
On February 23, 2015, the United States International Trade Commission (“ITC” or “Commission”) announced
a pilot program aimed at providing more efficient determinations on the scope of exclusion orders it issues under 19 U.S.C. § 1337. The program has direct implications on how intellectual property rights holders and importers can determine whether imported products are subject to existing ITC exclusion orders, and provides specific advantages over the options previously available for such determinations:
- First, the ITC made clear that entities can initiate product-specific determinations under both of its existing procedures that affect the scope of an exclusion order—modification proceedings and advisory opinion proceedings—and that both types of proceedings will be equally available to entities that were not a party in a previous ITC investigation but are nonetheless subject to a general exclusion order.
- This suggests a change in practice regarding modification proceedings, which have been little used to make such determinations.
- Making clear that importers may employ modification proceedings to resolve such questions gives importers the option of seeking an appealable, APA-protected proceeding to resolve questions of scope.
- Second, the pilot program provides specific timelines for concluding both modification and advisory opinion proceedings:
- For determinations involving purely legal issues, the Office of the General Counsel will conduct the proceeding and provide its recommendation to the Commission, with the Commission’s final decision normally issuing within 60-90 days;
- For determinations involving minimal fact-finding, the Office of Unfair Import Investigations will conduct the proceeding and provide its recommendation to the Commission, with the Commission’s final decision normally issuing within 90-180 days;
- For determinations that require extensive fact-finding, the Commission may refer the matter to an ALJ for development of a full record and issuance of an Initial Determination, with the Commission’s final decision normally issuing within 6-9 months.
- Finally, by encouraging entities to employ the ITC’s procedures for seeking such determinations, the pilot program ensures that scope determinations will be made in an inter partes proceeding, held on the record and, if appropriate, in front of a fact-finder that has tools available to receive and weigh evidence. The pilot program, therefore, addresses the lack of transparency and the ex parte nature of U.S. Customs and Border Protection (“CBP”) ruling requests, which do not involve both the importer and intellectual property rights holder, and are largely conducted off the record.
In sum, by making these proceedings available to non-respondents and setting timelines for final Commission determinations, the ITC has opened to the door to entities receiving timely, appealable decisions, made on a full record before both parties in interest.
On February 24, 2015, Adduci, Mastriani & Schaumberg L.L.P. partner Jonathan Engler
moderated a panel discussion on the current state of ITC law and practice at the American Conference Institute Forum on ITC Litigation & Enforcement, in which individual speakers from both the ITC and CBP discussed the new procedures. While the efficacy of the pilot program remains to be seen, both entities seem eager and willing to address complaints regarding enforcement to achieve the goal of providing timely, reviewable determinations on whether imported products are covered by existing ITC exclusion orders. If successful, the pilot program is likely to make the ITC the preferred forum for seeking determinations on the scope of the exclusion orders it issues.
To learn more about ITC exclusion orders, please see:
ITC Remedial Orders – The Case for Conformity with Patent Injunctions by Paul M. Bartkowski