A patent provides the patentee the right to exclude others from making, using, selling, offering for sale and importing the patented invention into the United States. The right to exclude others from importing the patented invention can be enforced in federal court but also at the International Trade Commission (ITC) which stops the importation at the United States border.
The ITC may be the preferred venue to bring such action because the lead time to resolution of the matter has been shorter at the ITC compared to the federal courts. However, in order to succeed at the ITC, the patentee must establish that a “domestic industry” for the patented product exists in the United States or that one is being established.
In order to establish the existence of a domestic industry, Congress allows one to show a “substantial investment in … exploitation [of the patent], including … licensing.” As such, even though one does not manufacture the patented product in the United States, if you license your patent or are in the process of licensing your patent, then a domestic industry could be established based on whether the efforts are substantial.
In Coaxial Cable Connectors, ITC investigation no. 337-TA-650, the plaintiff attempted to establish a “domestic industry” purely on the litigation expenses it incurred in enforcing its patent. The ITC held that “domestic industry” can be cannot be shown merely by pointing to the patent infringement litigation activities. Rather, documentable litigation activities and costs related to licensing activities must be shown to prove the existence of a domestic industry or that one is being established.
Should you have any questions or comments, please feel free to contact me.