Intellectual Property Update
AMAZON UTILITY PATENT NEUTRAL EVALUATION PROCEDURE
. This Amazon pilot program offers a tool for removing patent infringing products from the Amazon marketplace. Currently Amazon must invite the patent owner to participate (although the patent owner can solicit an invitation). Healthy Line recently announced Amazon had removed infringing infrared heat therapy mats using this program.
This program offers advantages of low cost, speedy and private resolution. A patent attorney (Neutral) is appointed to evaluate whether one product (identified by the Amazon standard identification number) infringes one claim in one utility patent. Multiple third party infringers can be included in a single evaluation if they are all selling the same product. This proceeding is not available for products sold by Amazon itself. The evaluation process is confidential.
The patent owner and the accused infringer(s) each pay $4,000.
- Participation is voluntary, but If the infringer refuses to participate the accused infringing products are removed from Amazon and the patent owner gets back the $4,000 payment.
- If the parties settle, the parties pay the Neutral patent attorney a total of up to $2,000 (divided equally) and receive back the rest of their payment.
- If the matter proceeds to a determination, the losing party pays the Neutral $4,000 and the winning party get their $4,000 back. Amazon removes the products within 10 days.
Speed. The accused infringer has 3 weeks to decide to participate and pay the fee. From the date the Neutral is selected, the patent owner has 3 weeks to submit a brief and claim chart. The accused infringer then has 2 weeks to submit a response brief and the patent owner has 1 week to submit a reply. Based on the briefs, the Neutral decides whether or not infringement “is likely” within 2 weeks. The entire process take 8-10 weeks.
Other Benefits to the Patent Owner.
- The accused infringer cannot assert lack of jurisdiction.
- Unless the accused infringer was selling the product on Amazon more than 1 year before the filing date of the patent, no challenge to patent validity can be made.
- To be reinstated the accused infringer must go to court and obtain a judgement or order that the accused product does not infringe or the patent is invalid or unenforceable.
- The patent owner can still go to court and seek damages.
Other Benefit to the Accused Infringer. The accused product will not be removed based on the accusation of infringement alone (the old rule applied by Amazon)
AMAZON BRAND REGISTRY An Amazon retailer with a registered federal trademark can upload their registered trademarks to an Amazon database. Once the registrations are verified by Amazon, the Retailer can use Amazon search tools to identify potential infringers and use Amazon reporting tools to notify Amazon of the infringing product listings. Amazon then takes corrective action.
AMAZON PROJECT ZERO This program is limited to Amazon retailers invited to participate. Project Zero allows the trademark owner to use a “self-service tool” to remove counterfeit products. Machine learning technology then helps automate the removal of future listings of the counterfeit product.
You should discuss with your attorney how these programs may impact your IP enforcement strategy on the Amazon platform.
RAY K. HARRIS