Amazon Seller Patent Attorney Can Help Navigate the Amazon Patent Evaluation Express Process
With millions of products to manage an attractive platform for third-party sellers, dealing with the unauthorized sale of patented goods is a significant challenge for Amazon. To address this issue, Amazon implemented the Amazon Patent Evaluation Express or APEX (formerly known as the Neutral Patent Evaluation Process). This process is intended to level the playing field between patent holders and those who are accused of infringement. An experienced Amazon Seller Patent Attorney at ESQgo®, PC can help business owners navigate the process.
The Unauthorized Sale of Patented Goods
Infringing on someone else’s patent is extremely easy to do. To steer clear of it, sellers need to know exactly what it is and how it can be avoided. It is also important to note that if a seller discovers that they have infringed another’s patent, ignorance is not considered a valid defense. Therefore, it is imperative to have counsel on board throughout the process to ensure compliance with Amazon’s infringement policy.
Patent Infringement Defined
Patent infringement, or the unauthorized sale of patented goods, occurs when there is an unapproved use of a product that is patented. It may include:
- The making, manufacturing, or production of a patented good
- Using a patented product in any way for profit or gain
- Selling a patented good to a distribution or manufacturing company
For a patent to be protected under the law, it must be filed with the United States Patent and Trademark Office.
How to Avoid Patent Infringement
To prevent selling unauthorized patented goods, sellers need to be familiar with utility patents and what they cover. A utility patent encompasses the functional use of a product. This type of patent can be difficult to prove as the aesthetics of the goods in question do not matter. Instead, the question becomes whether or not the product being sold performs the same function as the product that has been patented. To avoid a utility patent infringement claim, a seller needs to ensure the product they are selling does not do the same thing as a product that has been patented. This can be a hard call to make, and the assistance of a patent attorney may be needed to make the determination.
Amazon Patent Infringement Cases Are Unique
Trademark and copyright holders have long enjoyed protection from Amazon that hasn’t always been available to patent holders. Owners of registered trademarks, for example, can protect their brand by registering with the Amazon Brand Registry. Amazon will typically take quick action to protect the copyright and trademark rights of sellers in the marketplace.
Unfortunately, patent cases are more complex. Patent infringement claims require careful analysis to determine whether an infringement has occurred. This is typically handled with the help of an experienced Amazon Seller Patent Attorney.
In the past, Amazon would handle claims by removing the item from the store of the seller who allegedly infringed upon the patent. In most cases, the seller’s only option would be to appeal the suspension. If the seller was unable to resolve the issue, their sole remaining option would be to pursue arbitration against Amazon or litigation against the complainant – a costly process that most small businesses cannot afford.
An Amazon Seller Patent Lawyer can report a patent infringement to Amazon on your behalf to properly document everything for potential litigation. We hope it won’t come to that but creating a paper trail is best practice. In addition to a cease-and-desist letter asking the violating sellers to stop, we will submit notice to Amazon including your patent number, ASIN number, product URL, as well as supporting evidence demonstrating the infringement claim.
How the Amazon Patent Evaluation Express Works
To initiate the process, the patent holder must file a request to participate in the Amazon Patent Evaluation Express. As part of the request, they must submit a statement identifying the product or products that infringe upon their patent. The patent holder is limited to 20 products for each request, and each product must be identified by its Amazon Standard Identification Number (ASIN).
Once Amazon has received the request, it will notify the accused seller of the infringement claim and invite them to participate in the process. The accused seller has three weeks to decide. If they agree to participate, their listings will remain active pending the conclusion of the process. If you have received an infringement notice, an Amazon Seller Patent Lawyer can help you understand your options. We offer a free 1-hour consultation to learn about your specific situation so you can feel confident understanding your legal options.
The Amazon Neutral Evaluation Timeline
If both parties agree to participate in the process, Amazon will select a neutral third-party patent lawyer to evaluate the claim. Each party must pay a $4,000 deposit to the patent lawyer. Once the deposit is paid, the process then proceeds according to the following timeline:
- The patent holder has 21 days to submit its argument as to why the seller is infringing on its patent.
- The seller must respond to the patent holder’s argument within 14 days.
- The patent holder may submit an additional response in reply to the seller within 7 days.
- The evaluator will announce their decision within 14 days of the patent holder’s final response.
As you can see, the process moves fairly quickly and can be difficult for both patent holders and sellers to manage while trying to run their business. An Amazon Seller Patent Attorney acting as your advocate can handle the process for you and ensure you meet the necessary deadlines.
Our Amazon Seller Patent Lawyer Outlines the Possible Outcomes
The evaluator will only provide a reason for their decision if they determine that the seller does not infringe on the patent. If they find in favor of the patent holder, the listings for the product will be removed from the seller’s storefront. The evaluator will refund the $4,000 deposit to the prevailing party and keep the deposit paid by the other party.
Unfortunately, the unsuccessful party cannot appeal the decision or request reconsideration with Amazon. However, they can pursue litigation if they did not prevail on their claim, which is why we strongly recommend that you work with an experienced Amazon Seller Patent Attorney – the consequences of an adverse outcome in the Amazon Patent Evaluation Express process can be significant and costly.
For these reasons, it is best practice to engage an Amazon Seller Patent Lawyer to report the patent infringement to Amazon on your behalf to properly document everything for potential litigation. Of course, we hope it won’t come to that but creating a paper trail will be helpful. In addition to a cease-and-desist letter asking the violating sellers to stop, we will submit notice to Amazon including your patent number, ASIN number, product URL, as well as supporting evidence demonstrating the infringement claim.
Advantages of the Amazon Patent Evaluation Express Procedure
The process is attractive for several reasons. It is much less expensive than litigation, arbitration or an Inter Partes Review at the United States Patent and Trademark Office. The Amazon Patent Evaluation Express Process is confidential, so the parties do not need to worry about harm to their reputations. The process is also voluntary, so you are not obligated to participate. Perhaps most importantly, sellers who are accused of infringement may continue to sell the item in question until the process is concluded. In other words, sellers are not forced to halt sales until they prove that they have done nothing wrong. In short, your business depends on the outcome of the process – an Amazon Seller Patent Lawyer can help you reach a successful outcome.
It’s important to note that the process is available only in cases involving utility patents. If you hold a design patent or are accused of infringing upon someone’s design patent, you cannot utilize the Amazon Patent Evaluation Express Process. Whether defending against a claim or wondering whether you have a claim, a patent infringement lawyer specializing in Amazon Sellers can evaluate your case and explain your options.
Patent Infringement Questions Answered by Our Amazon Seller Patent Lawyers
Who can use the Neutral Evaluation Procedure?
Those who hold a valid utility patent.
When does a utility patent expire?
As long as all periodic payments are made to maintain the patent, it is good for 20 years.
What types of evidence will the evaluator consider?
The evaluator will not consider any oral testimony or arguments from either party. They will, however, consider photographs and charts in addition to the written argument and response. Discovery, depositions, and physical evidence are not allowed to be submitted for consideration.
What happens if the seller fails to respond to the claim of infringement?
Should the seller fail to respond to the patent infringement claim within the three-week timeframe they are allowed, then the patent owner is deemed to be correct in their allegations and the item in question is removed from the seller’s site.
Is a seller limited in what they can claim in defense?
Yes, the seller is limited in their defense claims. They may use only the following as defenses: non-infringement, a previous ruling by a court deeming the patent invalid, or the goods in question were on sale for more than a year prior to the patent’s effective date.
How Do I Initiate the Amazon Patent Evaluation Express Process if Another Seller is Infringing My Utility Patent?
To initiate the Amazon Patent Evaluation Express, you must submit a request inside Amazon Brand Registry. Only patent owners or their representatives, registered with Brand Registry, can initiate the process.
Once the request is submitted, Amazon will confirm if the patent is a suitable fit for this process in around 1-2 business days. If that is the case, then Amazon will send the Amazon Patent Evaluation Express Agreement (“Agreement) for you to fill out and submit to Amazon´s Patent Evaluation Express Team, which is part of Amazon´s Legal Department. Along with the Agreement, you must also submit all the evidence required in Exhibit 1 of the Agreement. Amazon’s lawyers will then review the Agreement and all accompanying information to determine if it is adequate; and, if so, they will notify the infringing seller(s) of your infringement claim.
These early steps are critical to the success of your infringement claim, so it is important that you are thorough and careful in preparing your initial submission. Our lawyers regularly represent utility patent owners in infringement claims filed under Amazon’s Patent Evaluation Express Process, and we can use our experience to help you protect your exclusive rights.
What Should I Do if I Have Received Notification of an Amazon Patent Evaluation Express Process Claim?
If you have received a notification that a company is claiming that products you sell on Amazon infringe the company’s patent rights, you should consult with a lawyer promptly. Once you receive notification, you only have three weeks to decide whether to participate in the Patent Evaluation Express Process. If you choose not to participate (or do not respond), Amazon will remove your allegedly infringing products from its marketplace.
How Can I Check Whether My Product Infringes a Registered Utility Patent?
If you are being accused of patent infringement on Amazon and you did not knowingly copy a patented product, you will want to review the claimed utility patent before responding. You can do this through the United States Patent and Trademark Office (USPTO) patent search portal. Due to the complexity of patent registrations and the various disclaimers and limitations that can apply, you will want to have a patent lawyer review the patent as well.
While patent registration affords strong protections, U.S. patent law is intended to promote, rather than discourage, innovation. As a result, patent registrations are often very narrow. But this does not stop registered patent owners from overreaching, so you could very well face an infringement claim from a registered patent owner that is wholly unsubstantiated.
Can I Go To Court Instead of Using the Amazon Patent Evaluation Express Process?
Yes, as a utility patent owner, you have the option to use Amazon’s Patent Evaluation Express Process or go to court (or potentially even do both). While the Patent Evaluation Express Process is relatively efficient, if you need immediate relief from patent infringement online, it may be in your best interests to seek injunctive relief in court. Additionally, if an Amazon seller is selling infringing products on other marketplaces as well, then you may need to go to court to secure adequate relief.
Can Patent Owners and Sellers Settle During the Amazon Patent Evaluation Express Process?
Yes, patent owners and sellers can — and frequently do — settle during the Amazon Patent Evaluation Express Process. In some cases, sellers do not realize that their products are infringing, and they will agree to stop selling once notified of a registered utility patent. At ESQgo®, we work to resolve all our client’s legal matters as efficiently and cost-effectively as possible, whether that means reaching an agreement, going through the Patent Evaluation Express Process, or protecting our clients’ rights in court.
What If I Disagree with the Outcome of the Amazon Patent Evaluation Express Process?
If you disagree with the outcome of the Amazon Patent Evaluation Express Process, your next step is generally to go to court. This is true whether you need to enforce your exclusive rights as a utility patent holder or need to take action against abusive enforcement.
Do I Need a Lawyer for the Amazon Patent Evaluation Express Process?
Since the Amazon Patent Evaluation Express Process is a legal process with legal implications, we strongly recommend that all utility patent owners and sellers engage legal counsel to deal with Amazon. At ESQgo®, we have significant experience on both sides of the Patent Evaluation Express Process, and we represent our clients in other patent-related matters as well.
What if An Amazon Seller is Infringing My Design Patent?
Amazon’s Patent Evaluation Express Process is currently only available to owners of utility patents. If an Amazon seller is infringing on your design patent, you will need to hire a lawyer to issue a cease-and-desist demand and take any other necessary legal action on your behalf.
Talk to an Amazon Seller Patent Attorney Today
At ESQgo®, PC, we have deep experience in resolving patent infringement claims. We work with both patent holders and sellers facing infringement claims. To schedule a free 1-hour consultation, contact us today to discuss your case with someone who knows how to get results.