For an ecommerce giant that prefers to develop its own systems, it is no surprise that Amazon would create its own legal system for resolving utility patent disputes. Meet APEX, Amazon’s own “patent court” if you will. This is a game changer for utility patent owners who now have a way to stop infringement without having to spend millions in a federal court lawsuit. The Amazon APEX patent program enables utility patent owners to remove infringing product listings from the e-commerce platform. Let’s dive into how the Amazon Patent Evaluation Express (APEX) program works.
Need to enforce your utility patent and remove infringing products on Amazon? Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you grow your sales by shutting down infringing sellers.
Which type of patent do you need for Amazon APEX?
Only utility patents qualify for the APEX program. For those of you who have filed provisional patent applications, you must follow through by filing a timely nonprovisional application. Furthermore, you need to get your nonprovisional application allowed which will be no easy feat. Utility patents need to be “renewed” by paying maintenance fees.
Design patents are enforceable on Amazon through a different program.
How many utility patents should you get?
One utility patent might not be enough. You are putting all your eggs in one basket and risking that your sole patent might not qualify for the program. Ideally, you want two or three utility patents which may be accomplished by filing child applications before your parent patent is granted.
That way, you have a fallback plan in case your first preferred patent is rejected.
How do you determine whether Amazon sellers are infringing your patent?
Utility patents are nuanced. You cannot simply eyeball a patent claim and accused product, and conclude that the claim is infringed. Even simpler utility patents require detailed technical comparisons to accused products. When selecting an independent claim to assert, your best option might not be Claim 1 if your patent has additional independent claims of broader scope.
Your patent infringement analysis should be done by a patent attorney, not a trademark lawyer or a patent agent. You want an attorney with patent infringement experience, someone who has litigated patents. Infringement experience matters, especially when the other side decides to move forward with the neutral evaluation.
Who makes APEX decisions?
In an APEX case, both sides submit their written briefs regarding infringement or the lack thereof pursuant to a schedule. After briefing is concluded, a written decision is made by the neutral evaluator. APEX evaluators tend to attorneys who have IP litigation experience, particularly in patent infringement litigation.
The evaluator will issue a final decision on whether the patent owner is likely or unlikely to prove infringement. The evaluator will keep the deposit of the losing party. If multiple accused infringers lose, then the evaluator can keep only a total of $4,000 and donate the rest to charity. The evaluator deposit is refunded to each winning party.
What can go wrong when you try to shut down Amazon sellers without a patent infringement analysis?
Be careful of throwing the first stone. You might start a fight that goes beyond the Amazon evaluation platform.
If the accused Amazon seller has the financial resources, they might sue you in federal court for declaratory judgment. The risk increases when you assert a patent that appears to have a low probability of success in proving infringement.
How do you start enforcing patents?
First, get at least one utility patent with decently broad claims. Even better, get more than one utility patent by filing child applications.
Second, enroll in Amazon Brand Registry. If you have not already done so, you will need to file a trademark application. Avoid filing for trademarks that present high risks of rejections based on similarity or descriptiveness.
Third, make a list of products by Amazon sellers that you believe are covered by your patent. Then have a patent attorney with infringement experience perform at least a preliminary review.
Fourth, send a Brand Registry invitation to your patent attorney so that they can submit infringement reports on behalf of your brand.
Fifth, have your patent attorney submit infringement reports against the ASINs which they believe are infringing.
Finally, be prepared for high legal expenses of following through with APEX if any of the accused sellers agree to proceed with the evaluation. Even though APEX will be a fraction of patent litigation costs, the cost to prepare written legal briefs to prove infringement may get into the tens of thousands.
Why does Amazon reject certain patents for APEX?
It is unclear why Amazon rejects certain patents. Obviously, if you are trying to enforce design patents then APEX is the wrong program. As far as why Amazon selects certain utility patents and not others, I really cannot say.
We can understand why certain complex patents get rejected since the verification of infringement may require a deeper level of technical analysis. The task may be impractical for a neutral evaluator to perform. For example, suppose an independent claim would require the evaluator to take apart an accused product or conduct testing in order to determine infringement. Such complicated patents would be unsuitable for APEX.
Another possible explanation might relate to the expiration date. If the term of your patent will expire soon, Amazon may not want to go through the hassle of removing products that will not infringe in the near future.
