Our team of experienced attorneys at Rosenbaum & Segall, P.C. take pride in providing top-notch legal services to businesses of all sizes, including those operating in the rapidly growing ecommerce industry.
As e-commerce continues to expand, it’s becoming increasingly important for businesses to protect their intellectual property. One platform that has recognized the importance of protecting intellectual property is Amazon. Amazon offers the Amazon Patent Evaluation Express or “APEX” program, which provides a streamlined and cost-effective way for businesses to resolve patent disputes.
Rights owners or their agents concerned about potential intellectual property infringements of their utility patents can apply for Amazon’s APEX program. Through use of Amazon Brand Registry’s “Report a Violation” tool, U.S. utility patent owners can file claims and apply to receive a neutral evaluation of a patent infringement claim against ASINs listed on Amazon.com.
If your patent meets the program requirements and you apply for APEX, the reported sellers can opt in to the evaluation and defend their ASINs. However, if none of the sellers opt in or if the neutral evaluator determines that the reported ASINs infringe on your patent, Amazon will remove the reported ASINs from their platform. Additionally, you can use the APEX ID associated with this decision in future U.S. utility patent reports within the Report a Violation tool, which can help you report infringement of your patent without an APEX evaluation once the successful decision is obtained.
To participate in the APEX program, your patent must be a registered U.S. utility patent, and it must meet certain requirements. APEX is not available outside of the United States. Moreover, design patents, non-U.S. patents, and expired patents are not eligible. Additionally, there must not be a court or International Trade Commission order finding infringement of this patent.
If there is litigation pending on a patent subject to a proposed or pending evaluation, Amazon may decide not to initiate, or to suspend, an evaluation until the completion of that litigation. Moreover, extremely technical utility patents, such as patents that cover the operation of hardware components in consumer electronics, may not be eligible for APEX.
When you report a potential patent infringement, you can apply for the APEX program, which allows up to 20 ASINs per application. If more than 20 ASINs are submitted in a single application, Amazon may reduce the list to 20 ASINs at its sole discretion. To ensure timely evaluations, Amazon limits applications to one claim from one unexpired U.S. utility patent.
Upon receiving an APEX application, Amazon will contact each reported seller and offer them the opportunity to participate in the evaluation and defend their listings against the patent infringement claim. If the seller does not participate, Amazon will remove their listings from the store. If a seller chooses to participate, Amazon will engage a neutral evaluator, who is an attorney skilled in patent analysis. The evaluator will review the patent infringement claim against the third-party product listing in the store.
During the evaluation, Amazon will communicate with each party via email, including sellers, evaluators, rights owners, and agents. The initial APEX evaluation typically takes 4 to 6 weeks to complete, and if a seller chooses to participate, the evaluation can take an additional 8 weeks to complete (12 to 14 weeks total). The reported listing will remain live during this time.
The evaluator will determine the outcome of the evaluation and may decide that the patent does not cover a product listing because it does not infringe, a court has found the patent invalid or unenforceable, or the accused products (or physically identical products) were on sale more than one year before the earliest effective filing date of the patent. Amazon will comply with the evaluator’s decision, pending any litigation or settlement between the patent owner and sellers, or other legal proceedings that may impact the patent. If the evaluator rules in favor of the patent owner, then the listing will be removed.
Finally, the evaluator requires a $4,000 deposit from all parties participating in the evaluation, and the outcome of the evaluation determines which party ultimately pays this fee. Amazon does not handle the deposit and does not retain any portion of this fee.
At Rosenbaum & Segall, P.C., we understand the complexities of patent law and the importance of protecting our clients’ intellectual property rights. Our team of attorneys has extensive experience in working with ecommerce businesses, including handling thousands of patent related claims on the Amazon platform and via Amazon Patent Evaluation Express.
We can help you navigate the Amazon Patent Evaluation program and provide guidance on how best to protect your intellectual property. Our attorneys will work closely with you to understand your business needs and tailor our services to meet your specific requirements.
Our attorneys are well-versed in the latest legal developments and can help you stay ahead of the curve in the ever-evolving e-commerce industry. Contact us today to schedule a consultation and learn more about how we can help protect your intellectual property on Amazon and other ecommerce platforms.
For more information about how the law firm of Rosenbaum & Segall can help you protect your brand on Amazon and other online marketplaces, please Contact Us today or call 212-256-1109.
