Amazon APEX Patent Program: Who Is It For?
Selling on Amazon is fast. Protecting your brand and patents, however, isn’t. Amazon sellers often start selling products without giving any thought to protecting their sales. If you sell an innovative product, you need the right strategy to protect your market share. Those strategies take time to implement so that you actually have something to use against competitors.
The Amazon APEX patent program enables patent owners and Amazon sellers to obtain a decision on whether accused products infringe utility patents. It is basically patent litigation at a fraction of the cost, but only with respect to Amazon listings (ASIN) and utility patents. Design patents may be enforceable on Amazon, but not through the APEX program.
Need to win an Amazon APEX patent case? Vic Lin is a registered patent attorney specializing in Amazon patent infringement cases. Contact Vic at vlin@icaplaw.com to explore how we can help you protect your online sales.
The Risks Amazon Sellers Face Without Using a Patent Attorney
Without patent protection, it will be nearly impossible to remove copycat listings by sellers piggybacking off your innovation. Getting a utility patent makes you eligible to use the Amazon APEX platform to shut down sellers copying your patented product. Here is a helpful short video on Amazon APEX.
The Risks Amazon Sellers Face When Selling Me-Too Products
Selling a me-too product can be profitable, but also highly risky. The main concern is that you might be infringing a patent, often times unknowingly.
Amazon patent violations boil down to one issue, infringement. To win a noninfringement case, you cannot afford to hire anyone who lacks:
- a license to practice before the USPTO; or
- patent infringement litigation experience.
Recognize that many patent lawyers may meet the first condition, but not the second. In other words, there are patent lawyers who merely file patent applications, but do not have experience litigating infringement cases.
Yet, it is the second requirement that is critical in winning a patent infringement dispute.
How a Winning Amazon APEX Patent Attorney Can Help Me-Too Sellers
If you sell a me-too product, you need to navigate around patents to avoid your listings being taken down. Unfortunately, patent agents can’t help because they do not litigate. Trademark attorneys who are not registered with the USPTO patent bar cannot file patents.
For the best APEX results, consider talking to patent attorneys with patent infringement experience. Ask questions about infringement vs. noninfringement, and how APEX is different from patent litigation cases in federal courts.
Me-too sellers face a very high risk of having product listings taken down. The problem is, by the time you find out, it may be too late.
Working with an experienced patent attorney like Vic will give you an edge over competitors. We might be able to help you explore weaknesses and non-infringement options to put your products on a safer path to ongoing sales.
What Makes a Top Patent Attorney Effective in Winning Amazon APEX Cases?
A US patent attorney has at least two licenses, a state bar license and a patent bar license. Amazon sellers should look for US patent attorneys that meet all of the following three requirements.
- First, patent attorneys – not agents – are licensed under a particular state in order to practice law. I am an attorney licensed under the state of California.
- Second, patent attorneys – not trademark lawyers – are registered with the USPTO to file patents on behalf of clients.
- Third, patent attorneys with infringement experience should have case studies on Amazon APEX patent cases.
Those who meet only the first requirement might call themselves IP attorneys or trademark attorneys. However, they cannot file patents for others although they can litigate IP cases.
Non-lawyers who are registered with the USPTO call themselves “patent agents.” Patent agents cannot practice law or litigate. Since patent agents cannot litigate patent cases, they typically have little to no infringement litigation experience.
Only a registered patent attorney like me can help Amazon sellers in both filing patents and defending against claims of patent infringement. We have won both infringement and noninfringement Amazon cases for clients.
To get help with protecting your Amazon sales, complete the form below to explore working with US patent attorney Vic Lin.
How Evaluators Decide Outcomes of Amazon APEX Patent Cases
APEX evaluators are chosen by Amazon. Typically, an APEX evaluator is an attorney with patent litigation experience.
APEX evaluators will review the written arguments by both the patent owner and accused sellers. Since invalidity of the patent can only be raised under limited circumstances, the majority of APEX decisions will center around whether or not the accused products likely infringe the asserted utility patent.
An APEX decision of likely infringement will result in the accused listings being taken down by Amazon. Conversely, a decision of noninfringement will allow the accused seller to continue selling on Amazon.
An APEX evaluation may include different products by multiple sellers. Accordingly, a separate APEX decision will be issued for each accused ASIN. It is possible, therefore, for one seller to receive a noninfringement decision while another seller receives an infringement decision.
Why Does Patent Infringement Litigation Experience Matter?
For patent owners, the goal is to remove infringing listings by Amazon sellers. To prove infringement, you need to show how your patent claim covers the accused products. Patent attorneys with infringement litigation experience will be better equipped to make this showing than lawyers who only prosecute applications.
For Amazon sellers attempting to sell goods without violating patents, the goal is to steer clear of any landmines. In either case, you need a patent attorney with experience in studying the claims of a patent in order to advise you on what the patent does and does not cover.
Lawyers who market themselves solely as Amazon trademark attorneys might not have the requisite patent infringement experience to help guide you through complicated patent disputes.
For example, a utility patent might have only one independent claim and that claim could recite several arguably questionable features. How will your patent attorney argue that such features are found in the accused product? If you are the accused Amazon seller, how will your patent attorney show that such claimed features do not exist in your product?
Case Study: How We Won An Amazon APEX Patent Case
This is a case of how we successfully defended an Amazon Seller accused of patent infringement.
The other side initiated an APEX evaluation against our client and a couple of listings by other sellers. After the evaluator deposit was timely paid by all parties, the chosen evaluator introduced himself and established a schedule for all written briefs.
The patent owner always goes first. They submitted an opening brief containing their infringement arguments and a claim chart detailing how they believed their chosen independent claim would cover our client’s product.
In APEX, the accused seller has only shot to make written arguments. Accused sellers do not get to file a second brief. Therefore, accused sellers must present their best noninfringement arguments in their one and only response brief.
In our response brief, we focused on a handful of key claim features which we argued were absent in our client’s product. Our noninfringement arguments covered both literal infringement and doctrine of equivalents.
Since a seller’s response brief is limited to 15 pages, we made strategic use of our claim chart. We intentionally provided multiple columns with annotated photos of our client’s accused products taken from a variety of angles. We pointed to key structures with succinct comments about the absence of certain claimed features.
Note that the Amazon APEX procedure only allows invalidity evidence in the form of prior court decisions or sales of the accused seller’s own products made more than one year before the effective filing date of the patent. In most APEX cases, this invalidity argument will be unavailable to accused sellers. Therefore, sellers really need to focus on and sharpen their noninfringement arguments.
In the end, the evaluator decision stated that our client’s product was likely to be noninfringing. The noninfringement decision focused on an argument which we did not expect to be the strongest.
As a result, our client has continued to sell their product on Amazon without fear of interruption.
How We Help Amazon Sellers Protect Product Sales
My practice focuses heavily on helping online sellers protect their product sales using patents as a tool. Patents can be argued offensively and defensively. We know how to win either side of the patent argument.
If accused infringers are invited to participate in a neutral patent evaluation, should an Amazon seller accept the invitation? Many Amazon sellers may be hesitant to proceed without knowing if they have a strong noninfringement argument. We can analyze your case and see where you stand.
If patent owners feel like online copycat sellers are taking market share, you need a winning strategy of effective patent enforcement. We know how to help patent owners protect their turf.
Need to fight an Amazon patent violation so you can sell more products? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore working with us.
