Discussed previously on this blog are some initial steps to take if you have received an e-mail from Amazon regarding a complaint from a “rights owner” that alleges your company infringes its patent. Below is the hypothetical e-mail we previously discussed that will closely resemble an actual e-mail from Amazon. This article focuses on what this e-mail represents, or more importantly what this e-mail does not represent, in practical terms. Here, again, is the hypothetical e-mail:
#1: What this e-mail means
This e-mail is the culmination of a relatively simple process undertaken by Amazon. Full details of this process as it relates to all Intellectual Property (“IP”) (Trademarks, Copyrights, Patents, Parallel Imports, and Right of Publicity) are provided by Amazon here:
With respect to a notice of patent infringement sent by Amazon like the hypothetical above, initially a patent owner has made the decision to assert its IP against a seller on Amazon. In the hypothetical e-mail, Company XYZ is asserting that its patent, Patent no. 12,345,678, covers the product of Company ABC having an ASIN of B123B456CL. It has accordingly notified Amazon of its allegation using a form which can be found here:
In response, if Amazon has determined that it will raise the issue with Company ABC, it will notify Company ABC via an e-mail like the one above. It is then up to the accused company to take steps to resolve the dispute.
#2: What this e-mail does not mean
It is especially important to understand what this e-mail does not mean:
- This e-mail does not mean a lawsuit has been filed.
- The e-mail refers only to a private dispute resolution tool instituted by Amazon by virtue of its right to control the products on its website.
- This e-mail does not mean that Company ABC’s product actually infringes the asserted patent.
- While Amazon purports to undertake at least a minimal role in assessing the patent allegations, there is no conclusion of infringement. You are free to raise any number of defenses, including non-infringement.
- This e-mail is not a part of Amazon’s Neutral Patent Evaluation Process (“NPEP”).
- In addition to providing a mechanism for a patent owner to assert its patent rights which culminates in an e-mail like the hypothetical one above, Amazon has a separate,more involved procedure called the Neutral Patent Evaluation Process.
- An overview of the NPEP can be found here:
- If you notice that the complaining company, in our example, Company XYZ, sells a product which it claims to be covered by the asserted patent, that sale is likely irrelevant to an infringement analysis.
- Patentees often mark their own product(s) with patent numbers, but unless their own product meets the limitations of the claims of the patent, it may not be covered by the patent.
- In any patent infringement analysis, the claim language controls and dictates whether there is infringement.
#3: What you should do
If you do nothing in response to this e-mail, it is possible and probably very likely that Amazon will remove your listing. Unfortunately, that means you will have to respond in some fashion if you wish to continue to sell on Amazon. We have previously described some initial steps you can take in this previous blog post.
The form of any response depends on how many resources you want to expend in the process of either fighting the allegations, entering into a license agreement with the complainant, or simply conceding to the complaint and voluntarily removing your listings from Amazon. In any event, it is advisable to seek advice from a law firm with both e-commerce law expertise and patent expertise on how to proceed.
ESQgo is uniquely equipped to assist you in these types of matters. We combine e-commerce law expertise, including dealing with Amazon, with patent expertise to help you assess and resolve whatever needs you might have.