Amazon Institutes Neutral Evaluation Process for Enforcing Utility Patents

As the buying and selling of goods has migrated from brick-and-mortar stores to online marketplaces, numerous legal and regulatory issues have arisen in this competitive marketplace, particularly in the context of intellectual property rights.  Fortunately, Amazon has made significant strides in adopting tools to help rights holders enforce their patents against infringers.

Amazon provides two avenues for reporting patent infringement.  First, an electronic form that can be completed and submitted online. Amazon will typically remove an accused product without further inquiry based on the submission of such a form, leaving it to the rights holder and the accused infringer to resolve the dispute between themselves.

Amazon’s other option is the Amazon Patent Evaluation Express (“APEX”) Program. The APEX Program is ex parte and enlists the guidance of a neutral evaluator to remove Amazon from the process.  The neutral evaluator is an intellectual property attorney who receives multiple rounds of formal briefing from the rights holder and the accused infringer before issuing a decision on whether the rights holder is “likely to prove” infringement.  A losing party’s products are then promptly removed from Amazon.

The APEX Program, which became generally available to members of Amazon Brand Registry in April 2022. To become a member of the Amazon Brand Registry, one must have a registered U.S. trademark covering the goods at issue. In other words, one must own a trademark to enforce one’s patents through Amazon Brand Registry.

Participation in the APEX Program is voluntary and confidential but requires each party that wishes to participate to deposit $4,000, with all prevailing parties having their deposits refunded at the end of the proceeding. Failure to participate in the program, however, results in the immediate removal of an accused infringer’s products from Amazon. If an infringing seller agrees to participate, their listing(s) remain active on Amazon until the end of the procedure.

The neutral patent attorney then establishes a schedule for submission of written arguments by the parties where, generally, the patent owner has 21 days to submit its initial arguments, the seller has 14 days to submit its response and the patent owner has seven days to submit an optional reply. The patent owner is limited to 20 pages between its initial arguments and any reply; the seller is limited to 15 pages for its response. There is no discovery, no hearings, and the only issue that can be addressed in the written submissions is the issue of infringement. Notably, invalidity is not a defense available under the APEX Program unless a district court, the International Trade Commission (“ITC”), or the U.S. Patent and Trademark Office (“PTO”) has found the asserted patent invalid.

A neutral patent attorney then considers the parties’ briefing and renders a decision, typically within 14-16 weeks from when the infringement was initially reported to Amazon. The losing party may not file an appeal or request reconsideration.

Compared to litigation before a district court, the ITC, or the PTO, Amazon’s patent enforcement tools are extremely fast and inexpensive.  And if the infringing products are primarily sold via online marketplaces, the impact of the resulting product removals can be far reaching.  These new tools for resolving IP disputes therefore have the potential to be powerful weapons in a rights holder’s fight against patent infringement.

It is important to note that Amazon’s APEX Program is not without limitation or risk. In addition to being limited to utility patents, the page limits imposed on participants makes the APEX Program impracticable for complicated technologies and patent claims. And there is no discovery (e.g., depositions, document requests, etc.) permitted in the APEX Program, so infringement will have to be shown through publicly available materials.

As for risks, recent district court filings show that the use of Amazon’s APEX Program may spawn retaliatory actions for declaratory judgement and tortious interference. These risks, of course, can be mitigated by thorough and thoughtful infringement analyses.

Ultimately, patent owners faced with infringing products sold on Amazon may consider the APEX Program as a potential first step in seeking relief from patent infringement, particularly if the patents are directed to straightforward technology that can easily be mapped to the accused products using public information.  The program offers speedy, cost-effective, and meaningful results when used responsibly.  Rights holders are therefore likely to take advantage of this recently launched enforcement tool in dealing with infringement on the Amazon platform. But the process is still new to most, so it will be important to engage experienced counsel to help ensure compliance with its various requirements and navigate the potential risks associated with it.

The patent attorneys of Lambert Shortell & Connaughton are familiar with this process and happy to discuss it during a free initial consultation which can be scheduled at calendly.com/lscip.