Dealing with unauthorized sales of patented goods can be an issue for patent holders, especially on e-commerce platforms like Amazon. To help patent owners with products that infringe on utility patents, Amazon created the Amazon Patent Evaluation Express or APEX process. Whether you are a patent holder or an accused infringer, Derek Fahey, Esq. can help you navigate this process.
Patent Infringement is unfortunately a very common issue in ecommerce. Utility patent infringement includes making, using, or selling a good that infringes on a utility patent’s claims. A patented good can be defined as an invention covered by a US utility or design patent granted by the United States Patent and Trademark Office (the “USPTO”).
HOW TO AVOID INFRINGEMENT
In order to avoid patent infringement, a seller needs to understand what type of patents protect what type of product. A utility patent protects the functional features of an invention, whereas a design patent protects the ornamental features of a product. 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 whether a product is infringing on a patent.
The Amazon Patent Evaluation Express (APEX) program offers a relatively quick resolution for patent owners dealing with products that allegedly infringe on their utility patent rights. Currently the APEX program is only available for infringement of a utility patent; however, design patent owners may also report design patent infringement to Amazon – just not with the APEX program. The APEX program provides a cost-effective approach to address utility patent infringement on Amazon. Prior to participating in the APEX program, patent owners should engage the services of a patent attorney to assess whether a product being sold on the Amazon platform infringes on any of their utility patent’s claims.
To initiate the APEX program, a patent holder must file a request to participate, including a statement identifying the goods that have allegedly infringed upon their utility patent. The infringing goods must be identified by their Amazon Standard Identification Number (ASIN) to be considered. In a single complaint, the patent holder can list up to twenty (20) products that are allegedly infringing on their utility patent, enabling the removal of multiple listings relatively quickly.
Upon receiving the request, Amazon notifies the alleged infringer and invites them to participate in the procedure. The alleged infringer has three (3) weeks to respond. If the seller agrees to participate, the accused listing remains active until the procedure is concluded. If you have received an infringement notice, Derek Fahey, Esq. can assist in evaluating your options. The Amazon APEX program offers a faster and less costly alternative to addressing patent infringement compared to the US Federal Court system.
If both parties agree to participate in the procedure, Amazon will appoint a neutral third-party attorney evaluator to analyze both parties’ positions. At this time, both parties must pay a deposit of $4,000.00 to the third-party patent attorney evaluator 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.
The accused party may only raise certain defenses to patent holder’s APEX complaint. These defenses are that each device does not infringe any of the patent’s claims, that a court held that the patent at issue is invalid, and that the accused device was on sale more than one year prior to the filing date of the patent at issue.
Once the third-party patent attorney evaluator 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 goods will be removed from the accused seller’s page. If the accused seller’s products are determined to not infringe the utility patent claims, then the third-party patent attorney evaluator will provide the reasoning as to why the seller is allowed to keep said listing active. The unsuccessful party may not appeal the third-party patent attorney evaluator’s decision. However, the unsuccessful party may pursue litigation in Federal Court at a later time. For this reason, it is important to properly document everything in the case of potential future litigation.
AMAZON’S APEX PROGRAM ADVANTAGES
Amazon’s APEX procedure provides Amazon sellers with a few advantages. First, Amazon’s APEX procedure can be much less costly than traditional litigation in federal court, arbitration or proceedings at the USPTO or Patent Trial and Appeal Board. Second, Amazon’s APEX procedure is confidential. 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 and only applies for goods sold on Amazon. Design patents will not be permitted within the process. Derek Fahey, Esq. and the other patent attorneys at The Plus IP Firm can help you protect your patent rights or deal with bogus claims of patent infringement on Amazon.