I know that one of the challenges you face as a patent holder is stopping illegal sales of your protected goods, especially on Amazon. If you’re just starting, you will find that it can be extremely tough to pull off.
With my extensive knowledge about Amazon, I’ve examined the various measures the platform has implemented to help sellers. One of the more effective ones is the Amazon Patent Evaluation Express or APEX.
My aim in this article is to examine the Amazon Patent Evaluation Express or APEX. I will explain how it aids patent owners in addressing cases of infringement, eligibility requirements, and how to use it.
A Guide to Amazon’s Patent Evaluation Express (Apex)
Patent litigation is expensive and time-consuming. It can take years and cost millions of dollars. Not all patent holders have the financial means to pursue this option. Even with arbitration, there are limited options for protecting patents. In recognition of the difficulties, Amazon has implemented the idea of a private patent evaluation program.
In 2022, after a three-year “Utility Patent Neutral Evaluation (UPNE)” beta-testing period, Amazon formally launched the Amazon Patent Evaluation Express (APEX) program. This allows sellers to spot possibly infringing products and enables Amazon to examine without turning to the traditional court patent system.
What Is APEX?
APEX, short for Amazon Patent Evaluation Express, is a specialized program by Amazon to efficiently address products accused of infringing on a patent holder’s rights. This initiative offers patent owners a relatively swift and cost-effective avenue for handling such infringements. Understanding the legal framework for patents in the USA is crucial when navigating Apex.
Patents are granted under the authority of the U.S. Patent and Trademark Office (USPTO), and they provide inventors with exclusive rights to their inventions for a limited period. The legal considerations for Apex are grounded in the broader patent laws and regulations of the United States.
APEX is a streamlined arbitration process with the following features:
With APEX, a qualified, independent third-party evaluator, selected by Amazon and jointly agreed upon by both parties, assesses the alleged infringement claim.
After the evaluator’s assessment, they reach a final and enforceable decision by Amazon.
Unlike traditional litigation, APEX focuses solely on the specific types of patent infringement on Amazon. This means broader legal issues relating to patent validity or ownership fall outside its scope.
Eligibility and Requirements
To be eligible to participate in the APEX program, you must meet certain requirements. APEX is a streamlined process designed to maintain efficiency and cost-effectiveness in its evaluations. As a result, only utility patents exclusively granted by the United States Patent and Trademark Office (USPTO) are eligible.
The design patents, plant patents, and other forms of intellectual property are presently excluded from APEX eligibility. For a patent to qualify, you must actively register it with the USPTO and list it in Amazon’s Brand Registry. Furthermore, you can only make infringement claims on listings or products actively available for sale on Amazon.
The APEX Process
Compared to the US Federal Court system, the APEX program is a faster and less expensive option for dealing with patent infringement on Amazon. Here is a step-by-step run-down of the APEX process:
Initiating the Claim
You must submit a participation request to initiate a claim through the APEX program. This request will include a thorough statement identifying the goods they believe have infringed on their utility patent. Your request must also contain the Amazon Standard Identification Number (ASIN) of the affected goods.
It should include full information regarding the utility patent you think has been infringed. A single complaint allows you to name up to twenty (20) products that allegedly infringe on your utility patent.
After filing the complaint, Amazon notifies the alleged infringer and allows them to participate voluntarily. If they choose not to participate, they will face the consequence of having their accused ASIN listings removed. If the seller chooses to engage, the affected listing will stay active until the end of the process.
Following submission of the request, Amazon performs a thorough examination within a few business days to determine approval. This initial phase determines whether your claim meets the required eligibility and submission conditions. Once approved, you will receive an APEX agreement to complete, sign, and return with the required materials.
Assignment of a Neutral Evaluator
Appointing a neutral evaluator is an important stage in the APEX process. If both parties agree to participate in the procedure, Amazon takes the initiative and assigns a neutral third-party attorney to investigate the allegation. During this phase, each party must pay the third-party patent attorney a $4,000.00 deposit to cover the costs of maintaining the case.
The $4,000 payment made by each side will cover the fees for the evaluator. At the end of the process, the winning party will get their money returned. So, if you win, your money will be returned to you, and the affected listing will be taken down.
The designated evaluator is a licensed patent attorney competent in the relevant product category. The evaluator functions independently, without compensation from Amazon, and Amazon plays no role in the decision-making process. This impartiality ensures an objective and fair review procedure.
After thoroughly assessing the information you provided and your asserted patent claim, the evaluator makes a simple “yes” or “no” infringement conclusion on whether the claimed invention covers the product listings on Amazon.com.
It is worth mentioning that a “no” ruling could result if the accused seller successfully defends against the infringement charge. However, the accused party can only use the exact defenses provided in the APEX process. The acceptable defenses include:
- That the accused products lack infringement (i.e., they do not encompass all elements of the claimed patent),
- That a court has determined the patent’s invalidity or unenforceability
- That the accused products were on sale more than one year before the earliest effective filing date.
The “express” in APEX is reflected in its streamlined structure and how it focuses exclusively on infringement arguments. Other defenses are not within the scope of the evaluator in this case.
Brief Writing Process
The APEX brief is a written argument that you and the seller present that addresses the issue of infringement or non-infringement regarding the asserted patent. You must send these briefs electronically to the evaluator and the opposing party in the same email thread.
The briefs must be written in English, printed on 8.5″ x 11″ pages, and without any physical evidence. The patent owner is limited to 20 double-spaced pages, including the first submission and a subsequent reply, excluding claim charts or exhibits.
The seller’s response to the opening brief is limited to 15 double-spaced pages, excluding claim charts and exhibits. You should also note that the seller is not entitled to respond to your reply brief. Aside from the page size and quantity constraints, no extra format or style requirements apply.
Within two weeks of the final response submission, the evaluator makes a decision, choosing between two options:
- The patent owner is likely to prove that the accused product infringes the asserted claim.
- The patent owner is not likely to prove that the accused product infringes the asserted claim.
No detailed justification is supplied in the event of a probable infringement determination. In contrast, if the evaluator believes infringement is unlikely, they will briefly explain why the patent owner is not required to establish infringement. You also keep in mind that this decision is final, and there is no way to request reconsideration.
Following the decision, Amazon will be swiftly alerted, and they will take the appropriate measures. If the patent owner is likely to prove infringement, Amazon.com removes the accused product within 10 business days. Furthermore, any fees paid to the evaluator are remitted to the appropriate party per the agreement.
After initiating the APEX process, the patent holder must present their argument within 21 days. Subsequently, the accused seller must react within 14 days of receiving the initial argument. The patent holder has seven days to submit an additional response.
The third-party attorney makes the important decision, announcing a verdict within 14 days of the patent holder’s last answer.
Frequently Asked Questions
How Do I Know If My Amazon Product Is Patented?
To ensure that your product design is not previously patented by someone else, undertake extensive online research. You can search the following online databases:
- United States Patent and Trademark Office (USPTO): This is the official database for US patents. You can search by keyword, inventor name, and patent number.
- Google Patents: This is a free service for patents worldwide. You can search by keyword, patent number, and other criteria.
How Much Does a Patent Cost?
Securing a patent normally requires hiring a patent attorney, whose fees typically vary between $8,000 and $10,000 for handling the patent application. However, expenses can vary. Budget around $15,000 to $20,000 for the full patenting procedure, including attorney costs and other associated charges.
Can You Sell a Patent to Someone?
Yes, you can sell a patent to someone. In doing so, you transfer ownership of your idea, relinquishing all rights associated with it. Alternatively, you can explore patent licensing. This is backed by 35 U.S.C. § 261, which states that patents are assignable in law by an instrument in writing.
This provision empowers patent holders to monetize their intellectual property by entering into agreements for the sale or licensing of their patents, facilitating the transfer of ownership rights to interested parties.
The Amazon Patent Evaluation Express (Apex) program is a useful resource for patent owners looking to protect their intellectual property on Amazon. Apex enables patent owners to deal with alleged infringements more efficiently by providing a speedier, less expensive, and less difficult alternative to traditional litigation.