Imagine you have a brilliant, valuable idea. You pour your energy and resources into a utility patent for your invention — and start selling it on Amazon. Sales take off. But you soon discover there’s a copycat on Amazon offering a product identical to yours. Or worse, there’s several copycats, each of them selling their own ‘me-too’ rendition of your product.
It’s an upsetting scenario. But thankfully, Amazon launched a process to deal with utility patent infringement by other sellers on the platform.
In 2019, Amazon started its Neutral Patent Evaluation Process. We’ll get into the details, but in a nutshell, the process provides an efficient means for making and resolving utility patent infringement claims involving Amazon product listings by enabling review by a neutral third-party evaluator. The evaluator is an independent patent attorney, hired by Amazon specifically to make a yes or no decision about whether patent infringement has occurred or not in your case.
Now, let’s break down the essentials of what you should know if you’re considering this process.
Amazon’s Neutral Patent Evaluation is:
- Confidential and voluntary
- Low cost (compared to patent litigation and the process for stopping the importation of infringing products)
- Limited to utility patents
- Limited to one patent claim contained within one unexpired U.S. patent
How it works
If you believe someone is infringing on your product patent by selling an imitation on Amazon you have the right to file an infringement claim (not be confused with a “patent claim” contained within the text of your patent) through the Neutral Patent Evaluation Process.
Before you begin the formal process, however, we encourage you to confirm that the product listings are indeed infringing on your patent. If you need help determining this, our team is here to assist. Doing this before you engage with the process will save you time, money, and ultimately – credibility with Amazon.
STEP ONE: Formally file an Amazon Utility Patent Neutral Evaluation Agreement
To start the process, you’ll need to contact Amazon’s legal department. When you do this, you should be ready to:
- Provide all the necessary documentation for your utility patent
- Identify which products, by their Amazon Standard Identification Number (“ASIN”), you believe are infringing your patent
- Explain how you the products are infringing your patent
- Each infringement claim can list up to 50 products
Building a strong case during this initial step is critical.
STEP TWO: Wait for Amazon to notify all parties
Next, Amazon will send out a neutral patent evaluation agreement to you (the patent owner) and the sellers that you accuse of infringement.
You and all of the accused parties will be sent a neutral patent evaluation agreement.
The accused seller/sellers have three weeks to consider the agreement and notify Amazon whether they agree to participate in the Neutral Patent Evaluation Process.
This plays out in one of two ways:
- The accused seller/sellers do not sign the neutral patent evaluation agreement, then:
- Amazon will remove the alleged infringing product listings
- The accused seller/sellers do sign the neutral patent evaluation agreement, then:
- Amazon selects a neutral third-party evaluator to investigate the infringement claim
- Amazon requests that you and the seller/sellers pay the third-party evaluator $4,000
- Amazon allows the product listings to remain online during the investigation
It’s worth noting that many claims end with the first scenario. Fraudsters on Amazon are often deterred by this legal challenge. This is especially true if you bring a well-formulated infringement claim. That’s why it is so critical to work with an experienced patent attorney from the onset.
STEP THREE: Allow the evaluator to complete the investigation
After both parties pay the $4,000 deposit to the evaluator, the evaluator establishes a schedule for the submission of written arguments by both parties.
Generally, the patent owner has 21 days to submit its initial arguments. The accused seller has 14 days to respond, and the patent owner has 7 days to optionally reply.
Modifications to the schedule are are only permitted where good cause is shown. The evaluator must announce a decision within 14 days of the patent owner’s reply deadline.
During this process, all parties file their arguments establishing why they believe they should prevail.
Under the evaluation procedure, accused sellers may only make three arguments:
- The accused product does not infringe the asserted patent;
- A court of competent jurisdiction, the U.S. Patent Office or U.S. International Trade Commission has found that the asserted patent claim is invalid or unenforceable; and/or
- The accused seller has credible evidence that the accused products (or physically identical products) were on sale one year or more before the asserted patent’s earliest effective filing date.
You (the patent owner) get the first and the last arguments, which is a big advantage. Unlike most trials, there is no discovery nor expert testimony. The evaluator will only consider legal arguments explaining each side’s position with respect to patent infringement.
Again, this is why it is critical that all of your arguments are precisely and skillfully made. Imagine you are standing before a judge, making a statement about why your competitors listings should be taken down. Of course, every word counts and must be carefully chosen. You want to make sure that everything you say is not only legally and factually correct, but provides compelling reasons why the evaluator should rule in your favor. to work with us as you present your case. Our patent expertise allows us to build a legal strategy based on your most convincing arguments.
This process moves quickly because the evaluator must make a ruling within two weeks. This is yet another reason you should have an expert legal team who can respond quickly and strategically if there are follow-up questions from the evaluator.
STEP FOUR: The evaluator provides a ruling
In the final step, the evaluator annonces a decision on your claim. By this decision, the evaluator determines that the patent owner is or is not likely to prove that the alleged product infringes the asserted patent claim.
If the ruling goes in your favor, the product/products in question will be removed from Amazon. You will also be reimbursed your $4,000 deposit.
If the ruling does not go in your favor, the product/products will be allowed to remain on Amazon. Conversely, you will lose your $4,000 deposit. In this scenario, the evaluator also provides reasoning for the ruling.
Amazon’s Neutral Patent Evaluation does not allow for appeals. You can, however, file a federal lawsuit to seek relief in court. In general, such options are costly, which is one of the reasons why the Neutral Patent Evaluation can be a very cost effective tool.
It’s also worth noting that participation with and a victory though Amazon’s Neutral Patent Evaluation Process can help you down the road. For future infringers, under the right circumstances the patent owner may simply report them to Amazon without having to formally initiate the Neutral Patent Evaluation Process for a second time.
In conclusion, Amazon’s Neutral Patent Evaluation Process gives inventors even more reason to secure utility patents. A utility patent can help you protect your market share and combat any imposters looking to profit off your hard work.
If you’re ready to secure your utility patent, or think you may want to pursue Amazon’s Neutral Patent Evaluation process, contact us to discuss your best legal path forward.
How we can help
While the intention of the Neutral Evaluation Process is to provide a lower cost option for enforcing your patent, clearly it may be won and lost based on the strength and skillfulness of the arguments you make. We can work with you to determine if infringement is present, and then build your infringement case in a way that is compelling to an evaluator.
Before submitting the claim we would also investigate and consider any arguments that a seller would likely make in defense, and incorporate this into our initial approach.
Conversely, if someone ever brings a patent infringement claim against you, we can also help. In that case, the first step is to determine if your are actually infringing their patent, then we can help you to respond appropriately.
