Amendments to the International Trade Commission’s Rules of Practice and Procedure became effective August 8, 2008. Under the new rules:

  • Parties will have one additional day for response deadlines when service is by overnight delivery;
  • Parties must designate in the notice of appearance a single attorney or representative to receive service from the Commission. Under the current rules, the Commission serves all appearing attorneys;
  • Complainant may serve the complaint upon a respondent in certain circumstances. Under the current rules the Commission serves the complaint upon the respondents. The new rule addresses, for example, circumstances when the Commission is unable to locate a respondent to make service;
  • Complainant must furnish IP licenses only if the allegation of domestic industry implicates the licenses. Further, the new rules do not require multiple copies of licenses in the appendix to a complaint. Under current rules, all licenses relating to the subject IP are required with the Complaint;
  • Complainant must include information regarding foreign patents in its Complaint. This is a new requirement;
  • Complainant must include in the Complaint infringement claim charts for each asserted independent claim. Under current rules, only a representative infringement claim chart per patent was required in the Complaint;
  • Summary determination motions are due 60 days prior to hearing. Under current rules, motions for Summary Determination are due 30 days prior to a hearing;
  • Parties must provide a status notification to the Commission of parallel district court proceedings. This is a new requirement;
  • Terminations by settlement or consent decree need not constitute determinations of violation. Currently, most terminations by settlement or consent decree incorporated violation determinations;
  • Responses to interrogatories, document requests, or requests for admission are due in 10 days, unless otherwise stated by the Administrative Law Judge (“ALJ”). This is a new codification in the regulations of the commonly utilized response time frame;
  • Initial determinations must issue four months prior to a target date in all circumstances. Currently, the amount of time prior to the target date that the initial determination issued differs depending upon the length of time from initiation until the target date;
  • An ALJ may set a target date for 16 months without Commission review. Under the current rules, the Commission reviewed target dates set for over 15 months. The new rules reflect a time frame that has become common practice, thereby alleviating the burden on the Commission to review the lengthier target dates; and
  • The new regulations clarify that the Commission has authority to issue civil penalties to enforce an ITC order, as opposed to the commonly accepted notion that a district court issues and enforces civil penalties to enforce an ITC order.