As millions of products are offered by third-party sellers each and every day dealing with unauthorized sales of patented goods is always an issue. To alleviate this issue, Amazon has created the Amazon Patent Evaluation Express or APEX process. By using this process, the goal is to form an even playing field for patent holders and potential patent infringers. Whether you are a patent holder or an accused infringer, Derek Fahey, Esq. can help you navigate this process.
INFRINGEMENT
Infringement is a very common issue in ecommerce. Patents can be infringed on by products sold on the Amazon platform especially when a seller is not aware of a patented product. However, ignorance is not a valid defense when dealing with patent infringement. This is one more reason highlighting the importance of having counsel by your side advising you throughout the process to ensure you comply with Amazon’s policies regarding infringement.
Patent infringement can be defined as the unapproved sale a product that is patent protected. Patent infringement includes making, using or selling a patented good. A patented good can be defined as an invention or design covered by a US utility or design patent granted by the United States Patent and Trademark Office.
HOW TO AVOID INFRINGEMENT
In order to avoid patent infringement, a seller needs to understand what type of patents protect what. A utility patent protects the functional features of an invention. A design patent protects the ornamental features of a product. Therefore, a seller would need to analyze the differences between a patent’s claims and the goods being sold. Patents are drafted very carefully and may sometimes be difficult to analyze. Derek Fahey, Esq. can help you to analyze a patent’s claims to determine the probability of if a product is infringing on a patent.
AMAZON PATENT INFRINGEMENT CASES
Trademark and copyright holders have been protected throughout Amazon by registering their brands with the Amazon Brand Registry. By doing this, Amazon is informed of their intellectual property and automatically takes action against infringers.
On the other hand, patent infringement allegations are much more complicated. Allegations of patent infringement must be carefully analyzed to determine if an infringement has in fact occurred. In the past, Amazon would take immediate action against an alleged infringer by removing the goods from the store, and waiting for the alleged infringer to appeal the suspension. This forces the infringer to resolve the issue or pursue arbitration against Amazon, or litigation against the patent holder. Both processes can be quite costly, especially for small businesses.
APEX PROGRAM
The Amazon Patent Evaluation Express (APEX) program is an Amazon program that allows a patent owner to relatively quickly deal with products that are allegedly infringing on a patent holder’s patent rights. The APEX program can be cost effective way to deal with products that infringe on a patent owner’s patent rights. Before starting the APEX program, a patent owner should hire a patent attorney to analyze if a product being sold on the Amazon platform is infringing on at least of a patent’s claims.
To start the APEX program, a patent holder will need to file a request to participate in the APEX program. The request will need to include a statement identifying which good(s) have infringed upon a patent. The protected good(s) must be identified by its Amazon Standard Identification Number (ASIN) in order to be considered. The patent holder may list up to twenty (20) products that are allegedly infringing on the patent owner’s patent in a single complaint. This means that the patent owner may be able to relatively quickly take down 20 listings of infringing products.
After Amazon receives the request, Amazon will notify the alleged infringer of the claim put forth and invite them to participate in the procedure. At this time, the alleged infringer has three (3) weeks to respond. If the seller agrees to participate, the accused listing will remain active until the procedure is concluded. If you have received an infringement notice, Derek Fahey, Esq. can help you evaluate your options. The Amazon APEX program is must faster and less costly means for dealing with patent infringement than the US Federal Court System.
If both parties agree to participate in the procedure, Amazon will appoint a neutral third-party attorney to analyze the claim. At this time, both parties must pay a deposit of $4,000.00 to the third-party patent attorney for the cost of the handling the matter. The process will then proceed accordingly:
- The patent holder will need to submit their argument within 21 days.
- The accused seller must respond within 14 days of receiving the argument.
- The patent holder is allowed to submit an additional response within 7 days.
- The third-party attorney will announce a decision with 14 days of the patent holders last response.
Once the third-party patent attorney makes his or her decision, the $4,000.00 deposit will be returned to the prevailing party. If the decision is in favor of the patent holder, the listings for the good will be removed from the accused seller’s page. If the accused seller is determined innocent, the attorney will provide a reason to the decision and the seller will keep said listing. The unsuccessful party may not appeal the attorney’s decision, however the party may pursue litigation in Federal Court at a later time. For this reason, it is best practice to properly document everything in the case of potential litigation.
APEX PROGRAM ADVANTAGES
Amazon’s Patent Evaluation Express procedure is advantageous for many reasons. First, it is much less expensive than traditional litigation, arbitration or Inter Parted Review at the USPTO. Second, the APEX process is confidential making both parties reputations safe. Third, the process is not mandatory giving both parties options and proper decisions to make throughout the process. Fourth, the process does not limit any party from selling their good until the process is concluded.
It is important to note that the APEX program can only be used in cases involving utility patents. Design patents will not be permitted within the process. Derek Fahey, Esq. and the other patent attorney’s at The Plus IP Firm can help you protect your patent rights or deal with bogus claims of patent infringement.