ITC Proofing Patents

By: Josh Sloat

Using the ITC to Block Import of Infringing Products

For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the infringing product is being manufactured outside of the United States? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.

The ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry.
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But how can you access the ITC, what are its requirements, how can you afford it, and what should you be thinking about now to help future proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time.
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Guest Host: Evan Langdon

Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than forty Section 337 investigations at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.
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Episode Overview: Quality Patents Part 4

Along the way, Evan and the panel discuss:

• What is the ITC and what are its advantages over court-based litigation to stop infringers?
• Requirements for filing an ITC Action
• Litigation financing options for the ITC
• Offensive and defensive strategies at the ITC
• Patent drafting and portfolio strategy tips for increasing your odds at the ITC
• Masimo v. Apple and the ITC's import ban of the Apple Watch
• The recent Lashify case and what it means for the domestic industry requirement

​Evan ​is joined today by our always exceptional group of IP experts, including:

• Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP
• Josh Sloat, Chief Everything Else Office at Aurora
  

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
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Resources.

To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• Continuation Practice: Quality Patents Part 3
• PTAB Survival Guide: Quality Patents Part 2
• Crafting Quality Patents
• Patent Claims: The Name of the Game
• Patent Anatomy: What's in a patent?​​

Related Reading

• Patent Anatomy: What's in a Patent?
• RESTORING Injunctive Relief

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Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.