What does APEX stand for?
Amazon sellers now have another avenue for enforcing utility patents. APEX stands for Amazon Patent Evaluation eXpress. As implied in its name, APEX is intended to be a quicker option for utility patent owners to enforce rights against product listings believed to be infringing.
Need to enforce or defend a utility patent on Amazon? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore your options and costs.
Where do you start?
At the outset, sellers need to register on Amazon Brand Registry. Nowadays, you do not necessarily need to have a trademark registered in order to apply for the Brand Registry. A pending trademark application filed with the USPTO may suffice.
By getting into the Brand Registry, you are now in Amazon’s system which provides you with various options for enforcing your IP rights against competing sellers.
What types of patents are eligible for Amazon APEX?
The APEX program works for utility patents only. Design patent infringement would not be covered under this program. Moreover, simpler technologies are more likely to be accepted. Utility patents with complex claims might not be appropriate for APEX.
How does Amazon APEX work?
Similar to the neutral patent evaluation program, APEX will involve a neutral patent evaluator (e.g., experienced patent attorney) who will render a decision on whether the accused listings infringe the asserted utility patent. Each side must be willing to pay a $4,000 deposit. The winning party gets the deposit refunded.
Patent owners registered in the Brand Registry can start by submitting a request for APEX that should include their utility patent number and the ASIN of allegedly infringing listings. After the request is submitted, Amazon will make a decision within a few business days on whether to grant the request. If so, the patent-owner-seller will receive an APEX agreement which must be completed and signed, and returned with the required materials.
Competing sellers accused of infringing a utility patent will then receive notice and the option to participate in the APEX program. Only three weeks are given to accused sellers to make a decision. Amazon sellers who do not participate will have their accused ASIN listings removed. So accused Amazon sellers have a choice to make up. Either pay the $4,000 deposit and hire a patent attorney to make noninfringement arguments, or forfeit the accused product listings.
What are the deadlines for legal arguments?
Once APEX has been initiated, the patent owner has 21 days to submit their arguments.
Accused sellers then have 14 days to submit their opposing arguments (i.e., noninfringement arguments).
The patent owner gets the last say and has seven days to submit a reply.
How long does it take to receive an APEX decision?
If both parties move forward with APEX, the neutral patent evaluator will issue a written decision within two weeks of the final reply brief deadline. The winning party gets their $4,000 back.
One way Amazon makes this program “express” is by streamlining the cases to consider only infringement arguments. Defenses other than noninfringement – such as invalidity of the claim or the bad faith of the patent owner – will not be considered by the evaluator.
In limited circumstances, an accused seller can present evidence of a prior ruling of invalidity. However, this is highly unlikely. Most patent owners would not proceed with enforcing a patent that has already been ruled invalid.
Does Amazon track records of wins and losses by IP rights owners?
Would you expect an e-commerce giant intensely driven by data to somehow ignore the results of their own patent cases? As you might expect, case results are tracked by Amazon. Furthermore, victorious patent owners may be able to piggyback off a prior successful APEX case by using an assigned APEX ID against similar listings in the future without going through another evaluation.
What strategies cannot be ignored by Amazon sellers?
Innovative Amazon sellers must plan head and timely file a broad range of IP rights to enforce against copycats. For example, certain products may be eligible for both design patent and utility patent protection. Utility patent applications for simpler products should be written with at least one independent claim that would be more appropriate for APEX.
Amazon sellers who simply wish to sell products without getting into trouble might consider having a Freedom-To-Operate analysis done before selling and preferably before investing substantial capital in purchasing inventory.
Need an experienced patent attorney to fight an Amazon APEX case?
Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore options and strategies for protecting your sales on Amazon.
