How to Handle Design Patent Infringement Complaints on Amazon

If you sell products on Amazon, getting a complaint about design patent infringement can feel overwhelming. These claims can temporarily shut down your product listings, lower your sales, and hurt your reputation. However, understanding the complaint and knowing how to respond can help you resolve the issue. This article explains the steps you can take to handle a design patent infringement complaint on Amazon.

1. Understand the Complaint

A design patent protects how a product looks, not how it works or its internal structure. When you receive a complaint, take the following steps:

• Find the U.S. design patent number listed in the complaint.
• Look up the patent using the USPTO website or talk to an intellectual property attorney.
• Review the patent drawings and claims to see what part of the design the patent protects.

If the complaint does not include enough details, contact Amazon for more information. You may also challenge the complaint if it lacks evidence.

2. Determine if Your Product Infringes

To determine if your product infringes on the design patent, consider the following:

• Ordinary Observer Test: Would an average person, who knows about similar designs, think your product and the patented design look nearly identical or deceptively similar? The test focuses on the overall appearance, not small details.
• Prior Art: See if there were similar designs before the patent was filed. If older designs exist, the patent may not be valid. While you cannot raise the validity of the patent when responding to design patent infringement complaints on Amazon or other e-commerce platforms, it is a factor in the ordinary observer test. To learn more about the role of prior art for the ordinary observer test, click HERE.
• First Sale Defense: If you sold your product before the patent’s filing date, that can be a strong defense. If you have proof of your sales, that can be provided in your defense.
• Design Differences: Point out any features of your product that are clearly different from the patented design.

A patent attorney can help you analyze these points and provide professional advice.

3. Respond to the Complaint To Have Amazon Reactivate Your Product Listing

After reviewing the complaint, choose the best way to respond:

• File a Counter-Notice: If you believe the complaint is bogus or your product does not infringe, send a counter-notice to Amazon. Include evidence like older designs (prior art) or differences in design.  A response should be carefully crafted to include legal and factual responses why the complaint is bogus or your product listed does not infringe on the asserted patent.  The response must also be carefully drafted to follow Amazon’s rules carefully to avoid delays.

• Contact the Patent Owner: You may be able to resolve the issue by talking to the complainant directly. However, always speak to an attorney first to avoid mistakes.
• Change Your Product Design: If possible, update your product design so it does not conflict with the patent. Inform Amazon after making changes to get your listing reinstated.

4. Handle Baseless or Bad-Faith Claims

Some claims may be false or made by competitors to wrongfully harm your business. If this happens:

• Validity Challenge: You may want to challenge the validity of your competitor’s patent.  If you have evidence of older designs (prior art), you can petition the USPTO to review the patent and challenge its validity.
• Document Misconduct: Keep proof that the complainant is acting unfairly. This evidence can help you file a claim for unfair competition. 
• Report bogus claims: If your competitor continues to file bogus claims, you may want to report the competitor’s seller’s account to Amazon and seek to have the seller’s account removed for multiple false violations that violate Amazon’s terms of service.

5. Prevent Future Complaints

To lower the chances of getting more complaints, follow these steps:

• Complete a Patent Search: Before launching a product, work with a patent professional to check for existing design patents that may be an issue for your product listing.
• File for Your Own Patents: Protect your designs by applying for design patents or trademarks.  This may be helpful to show that your product does not infringe on another’s patent.  Also, you be able to use your patents and trademarks to prevent other sellers from unfairly competing against you.
• Keep Records: Save documents that show how you developed your product, including sketches, drafts, and sales records. This will help prove originality.

Conclusion

Handling a design patent infringement complaint on Amazon can be stressful, but a clear plan makes it easier. By understanding the complaint, reviewing your product carefully, and responding the right way, you can protect your business and get back on track.

If you need help dealing with a complaint or want to protect your business in the future, contact us to get expert advice and a strategy tailored to your situation.

For more insights on the APEX process, explore our related articles:

• Navigating Amazon’s IP Enforcement Tools: Maximizing Your Intellectual Property Protection.
• Amazon’s APEX Program

The attorneys at The Plus IP Firm have experience defending and enforcing design patents on Amazon, other e-commerce platforms, and in Federal Courts.  To learn more about Derek Fahey, who authored this article, click HERE.