What are your options when Amazon ASIN listings infringe your patent?
Great selling products on Amazon will undoubtedly face competition. While more competitors are generally good for consumers, competition must be fair in order to be lawful. Patents give sellers a fair and lawful way to block competitors from copying innovative products. So, how do you use your patent effectively to block an infringing Amazon ASIN?
Design or Utility Patent: What type of IP will block Amazon sellers more effectively?
Know which type of patent you own. Amazon offers different options for resolving infringement depending upon the type of patent involved. Utility patent infringement is handled by an Amazon program called APEX which stands for Amazon Patent Evaluation Express.
In addition, Amazon can resolve design patent infringement cases through design patent neutral evaluations. Owning both utility and design patents will provide the broadest scope of protection.
If forced to pick, I suggest getting a utility patent because it opens the possibility of obtaining an APEX ID which will give you a shortcut to blocking future infringers.
How to Use Your Utility Patent to Stop Infringing ASINs
Before accusing an Amazon ASIN of patent infringement, do your due diligence. Make sure your utility patent actually covers the competing product. Determining infringement of a utility patent can be highly nuanced. You cannot simply compare the accused product to the patent drawings.
Choosing the best independent claim is critical. It would be best to confer with a patent attorney experienced in infringement to help you determine if your utility patent covers what you think it does. If so, make sure you pick the right independent claim to assert in the evaluation.
How do you report patent infringement against infringing Amazon ASIN sellers?
Assuming your patent covers the competitive products, you or your patent attorney can submit a patent infringement complaint within the Brand Registry platform. You can invite a patent attorney to act as an agent of your brand. If you would like to consider engaging our firm to serve as an agent of your brand, please email me.
While you can report multiple infringing ASINs at one time, you may want to report only certain listings initially. This is a strategic decision you should consider with your patent attorney. Give careful thought to the accused sellers and their ability to challenge your infringement claim.
To report infringement of a utility patent, you will need to request APEX. For design patent infringement, you will request a design patent neutral evaluation.
How do you respond to an Amazon neutral patent evaluation invitation?
If your request for a patent neutral evaluation is accepted, Amazon will email you or your agent a patent evaluation agreement. The patent owner must timely complete, sign and return the Patent Owner’s part of the evaluation agreement which requires information on the accused ASINs and asserted patent.
After receiving the patent owner’s signed agreement, Amazon will send the patent evaluation agreement to each accused seller who will have about three weeks to return their signed agreement. If the accused seller fails to send their signed agreement in time, their accused listings will be removed.
If the accused seller returns their signed agreement, then each side will need to pay a $4,000 deposit for the selected evaluator. The winning party will get their full deposit refunded.
How do you submit an Amazon ASIN patent infringement argument?
Assuming each accused seller returns their signed agreement in time, a schedule will be set for written infringement arguments. The patent owner always goes first. The opening infringement brief must clearly describe how each accused ASIN infringes the patent claim. Each accused seller will then respond with a written brief of noninfringement or prior sales. Finally, the patent owner will have the option of submitting a reply.
The evaluator will make a decision within a couple of weeks after the optional reply deadline and email the decision to all parties.
What is an Amazon APEX ID?
An Amazon APEX ID is an identification number given to a patent owner who has consistently and successfully enforced their utility patent against infringing Amazon sellers. Each APEX identification number is specific to only one patent. You cannot use an APEX ID designated for a first patent on a second patent.
With an APEX ID, an owner can report patent infringement against future Amazon ASIN listings without having to go through the evaluation process. Note that APEX ID numbers are given only for utility patents, and not design patents.
What if you do not get invited to participate in an Amazon neutral patent evaluation?
Amazon’s internal patent department may decide not to invite you to participate in a neutral evaluation. The reasons can be varied and puzzling. It may or may not have anything to do with the scope of your claim. For example, the expiration date of your patent might be too soon. In most situations, you will not be given satisfactory reasons for why your patent evaluation request was denied.
What are your options? It would be ideal to own multiple patents covering your top selling products. Having a second patent gives you a fallback option in case your first patent is rejected. This is why it is so important to file child applications before your parent patent is granted.
