The ease and ability for anyone to sell on Amazon has created a variety of challenges for patent holders who may discover that their patented inventions (or counterfeits of their patented inventions) are being sold directly to consumers online without permission.
In the past, patent holders have tried to hold Amazon directly liable for such actions. In theory, it’s easier for patent holders to go after one known central party like Amazon in court (and one that has deeper pockets), than attempting to chase offending sellers who could be located anywhere in the world.
However, some courts have held that Amazon is merely a marketplace platform rather than a “seller” and therefore they are not liable for infringement against the patent holder. Amazon merely has the responsibility to remove knock off products once they are discovered, leaving the bulk of policing and monitoring of the global platform completely up to the patent holder.
Fortunately, Amazon has taken positive steps in recent months to help empower intellectual property holders to more easily find and go after third-party infringers, including their Amazon’s Brand Registry and a brand-new pilot program that was recently announced called the Amazon Utility Patent Neutral Evaluation Procedure.
As of now, the Utility Patent Neutral Evaluation Procedure is entirely voluntary and works as follows:
- This tool is only available for owners of unexpired utility patents in the United States.
- Patent owners can request a fast evaluation of their infringement claims against a third-party seller.
- Once the patent owner fills out the information necessary to complete the evaluation, a copy will be provided to the seller/alleged infringer and they will have a limited time to respond to the allegation.
- If the seller agrees to participate, Amazon will select an attorney to serve as a neutral patent evaluator, who will be paid $4,000 from both the patent holder and the third-party seller. If the seller refuses to pay the fee in general, they will have their listing removed from Amazon.
- The winner of the claim will be refunded their $4,000 fee at the end of the evaluation.
- There is currently no process for appealing the decision of the patent evaluator.
Of course, this process does not mean the patent dispute against the third-party is over. This resource is only designed to provide lower-cost options for settling patent infringement disputes on Amazon only. Both the patent holder and the seller (who perhaps does not believe that he or she is infringing on the patent) can still litigate their arguments in court. Amazon is aware of this possibility and notes that they will reinstate a product removed under this evaluation process only with a court order that states that patent infringement did not actually occur.
Patent disputes can be complicated, costly, and take a long time to settle. In the meantime, significant damage can be done to a brand’s reputation and bottom line if infringing actions go unchecked. If you need help evaluating your options in stopping patent infringement or in defending yourself against a patent infringement claim that you do not believe is valid, please contact our law firm at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.