How can an Amazon seller benefit from design patents?
IP simply cannot be ignored when you’re selling on Amazon. A common misconception is that IP is not a factor when low-tech or no-tech products are involved. Don’t fall into that trap. Those who tend to ignore IP are the ones caught off guard when, for example, a patent owner blocks them from selling a competing product on Amazon. If you are an Amazon seller, design patents must be considered – either offensively or defensively.
Offensively, you can acquire design patents to protect the unique visual appearance of your product. Defensively, you’ll want to avoid selling products that look too similar to any designs patented by competitors. A freedom-to-operate (FTO) search can help provide guidance on what features to avoid in your product.
Need to enforce your design patent on Amazon? Call US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you protect your sales on Amazon.
When should Amazon sellers consider filing design patents?
Ideally, you should consider filing a design patent application before launching your product. By launching, I’m referring to the earliest disclosure of your concept to the public. Filing before any public disclosure can help you win the race to the Patent Office and keep your foreign filing options open.
How to enforce your design patent against Amazon sellers
Amazon provides IP owners with a few options for enforcing design patents against listings accused of infringement. One option is to report infringement.
How to report design patent infringement using Amazon’s form
At the outset, you can start by submitting Amazon’s report infringement form. This form allows you to identify your design patent number and the ASIN of each listing you believe is infringing.
Use Amazon Brand Registry to enforce design patents
Another option is to enroll in Amazon Brand Registry. This program provides Amazon sellers with ways to enforce trademarks and design patents. Brand Registry does not handle the enforcement of utility patents.
How to use Amazon design patent evaluation
Another option is known as Neutral Patent Evaluation or NPE. A design patent owner can request a proceeding where a neutral evaluator would assess an infringement claim made against particular listings. It’s basically Amazon’s version of a patent court.
Currently, the NPE program is available for design patent infringement on a case-by-case basis. A design patent owner may request that Amazon initiate the evaluation, but there is no guarantee that an NPE will be granted.
If a request is granted, the design patent owner must sign and submit their evaluation agreement within a couple of weeks from the date of the invitation. Once submitted, Amazon will send the agreement to each accused seller giving them a few weeks to sign and return their evaluation agreements.
If at least one seller returns a signed agreement, each side must then pay the deposit for the neutral evaluator at $4,000 per party. The winner gets the deposit back. So if you have a strong case, you might end up paying only your attorney’s fee.
Since it is common for accused sellers to feel discouraged from proceeding with the evaluation, patent owners might avoid the evaluator deposit due to the failure of sellers to return their signed evaluation agreements.
How to avoid infringing design patents
You can start by searching Google patents for design patents owned by key competitors. If you locate any, consider discussing your search results with a patent attorney to formulate a gameplan. Navigating around the competitor’s design patents may require looking into the prior art references reviewed by the patent examiner during the application examination process.
How do you defend an Amazon design patent violation?
You might be on the receiving end of an Amazon design patent infringement accusation. While you can submit an appeal with arguments regarding noninfringement, it is uncertain who will review your arguments and how reasonable the outcome will be. You might consider requesting a neutral design patent evaluation, but recognize that Amazon might reject your request.
What if you were selling a ton of goods per month? If you believe you have a strong case of noninfringement, a declaratory judgment lawsuit filed against the patent owner is an option. Do not, however, take this option lightly. Patent litigation is a substantially costly undertaking.
Are you an Amazon seller looking to file design patents?
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can develop and execute a strategy to build a patent portfolio to protect your sales on Amazon.
