Does Amazon allow patent owners to file a claim for utility patent infringement against sellers?
Yes, Amazon offers its own patent court for sellers to resolve utility patent infringement claims. Neutral Patent Evaluation is the name of the process to resolve Amazon utility patent infringement claims. NPE is a streamlined procedure for sellers to get a determination of utility patent infringement that could then block sales of competing products from accused infringers.
How do you request an Amazon NPE for a utility patent?
To initiate a utility patent infringement claim against an Amazon seller, a patent owner must sign and submit an Amazon Utility Patent Neutral Evaluation Agreement to Amazon with the requested information. Each seller accused of infringement will have the option to sign and return the agreement within three weeks or have their listings of accused products removed from amazon.com.
How is a neutral patent evaluator selected?
Amazon will select an experienced patent evaluator, who will likely be an IP attorney with patent litigation experience. The subject matter of the patent may be a factor in choosing a more fitting evaluator. Of course, one significant risk in using Amazon’s neutral patent evaluation process is that the selected evaluator may be unfamiliar with the technology of the patent and accused products.
How much does it cost to participate in Amazon’s neutral patent evaluation?
Each party must wire a fixed fee to the evaluator. At the time of this post, the NPE fee is $4,000 per party. The fee is returned to the winning party.
Compared to a full blown patent litigation case in federal court, the Amazon evaluation fee is certainly more affordable and within the reach of most sellers doing business on the platform.
What written infringement arguments should be submitted?
When it comes to arguing infringement, a detailed claim chart is a must. For the patent owner, you want to be thorough in walking through the one independent claim that best covers the accused products.
For accused infringers, a reply brief arguing noninfringement should include a detailed explanation of how certain claim limitations are missing in the accused products. It may bolster the noninfringement argument to show why the absence of certain claim elements makes sense (e.g., cheaper manufacturing cost, lighter, easier to use, etc.).
What other evidence can be used to defend against an Amazon utility patent infringement claim?
Amazon sellers accused of patent infringement may also present evidence of prior sales of products covered by the asserted claim. The principle here is that a patent should be considered invalid if it covers what had already been sold prior to the filing date of the patent.
Satisfactory evidence of prior sales must meet the following conditions:
- The prior product must be covered by the asserted claim (i.e., meet each claim element); and
- The prior product was sold one year or more prior to the earliest effective filing date of the patent.
Should you invest in a preliminary analysis before agreeing to the neutral patent evaluation procedure?
It depends on whether you are the patent owner or the accused infringer, and the strength of the asserted patent. Patent infringement analysis is a technical exercise that cannot be eyeballed. If you are considering the NPE process, feel free to request our quote for a preliminary infringement review.
Is there a quicker way to enforce utility patents against Amazon sellers?
Yes, Amazon APEX is a newer program for sellers who wish to enforce utility patents against infringing listings. Utility patent owners must first register on Amazon Brand Registry, and then request an APEX evaluation identifying the ASIN of products in dispute.
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