What are the right patents for Amazon sellers?
Amazon sellers face a unique challenge in stopping competitors from selling copycat products. Traditional patents that might work in the courts may not be the best type of IP protection for online sales on the e-commerce platform. Since Amazon uses their own legal system for adjudicating patent disputes, sellers need to know how to play the IP game Amazon’s way. Let’s explore what patents make the most sense for Amazon sellers.
Need the right patents to stop Amazon sellers from copying your innovative products? Contact US patent attorney Vic Lin at vlin@icaplaw.com to see how we can help protect your Amazon sales.
Do you need a utility patent or design patent?
While you may ultimately need to confer with a patent attorney, let me at least point you in the right direction. The question is not whether or not your product is functional or aesthetic. Instead, focus on your unique features. Are you concerned about protecting how our unique features work or how they look?
Utiliy patents protect functional features whereas design patents protect ornamental features. In some cases, it may make sense to file both types of patent applications. Filing both may result in broader patent protection and give you patent rights sooner that you can then enforce on Amazon.
What are the wrong design patents for Amazon sellers?
Design patents are great if used properly. By nature, design patents offer limited protection because they cover only the ornamental appearance of a product.
Here are some examples where Amazon sellers can go wrong with design patents:
- attempting to use a design patent to cover a functional feature (and failing to file a utility patent);
- using only solid lines in the drawings without at least considering broken lines;
- failing to cover variations by filing only a single design application;
What are the right design patents for Amazon sellers?
Design patents protect the visual appearance of your product. A wise strategy for design patents will involve the use of broken lines in the drawings to maximize the scope of protection.
See these examples of broken line drawings from the USPTO:
Patent attorneys with design patent experience will be able to provide guidance on what should be shown in solid lines versus broken lines.
Should you file multiple design patents?
Design patents protect the visual appearance of products. They do not protect functional features. Competitors, therefore, might be able to avoid infringing your design patent by making their products look different.
While the strategic use of broken lines can help, you may want to consider filing multiple design patents to cover your most popular designs. If you have not begun selling your product, think about the most obvious variations in the appearance of your product that competitors might also consider.
What are the wrong utility patents for enforcement on Amazon?
For utility patent infringement cases, Amazon provides sellers with a neutral patent evaluation program called APEX. The challenge, however, is that not all utility patents will be given an opportunity to participate in the program.
Certain qualities about your utility patent may diminish your chances of obtaining an APEX evaluation. For example, your patent expiration date may be a factor. Amazon APEX appears to disfavor patents that are close to expiring.
Furthermore, the type of patented technology is a factor. Complex patents are usually not granted an APEX review. Such patents typically require deeper analyses of the accused products that might involve breaking apart the accused products and possibly conducting certain tests.
Lastly, the type of claims will affect the probability of an APEX evaluation. Method claims, for example, may be more challenging than apparatus or device claims.
So here are examples of wrong utility patents for Amazon sellers:
- patents nearing expiration
- complex technologies
- method claims
What are the right utility patents for Amazon sellers?
Utility patents with apparatus claims are optimal for Amazon APEX. Ideally, each independent claim should recite just enough features to be allowable over the prior art, and yet broad enough so that competitors will not be able to design around the claims easily.
Try to aim for multiple independent claims in your first utility patent. Yes, I meant your first utility patent because you should file a child application (aka continuing application) to obtain a second patent.
The decision makers behind Amazon APEX can be finicky about granting an evaluation on a particular patent. Having additional patents will provide you with a backup plan in case your first selected utility patent is not approved for APEX.
Plan Ahead
One obvious lesson bears emphasis. Those who plan ahead will have an outsized advantage over those who do not give any thought to these issues. Having the right patents to enforce against other sellers requires a gameplan that starts years before the copycats arrive on Amazon.
It pays to work with patent attorneys experienced in infringement. Many IP lawyers and patent agents have only filed patents, but have never litigated an infringement case.
Patent attorneys with infringement litigation experience will be mindful of how their claims can be designed around by competitors. That is one of the reasons why we strongly recommend filing child applications.
What good will it do you to save a few bucks in hiring a patent practitioner if your patent does not effectively block competitors?
