If you are a patent owner and have identified a product on Amazon that infringes on your intellectual property, you have the right to take action by submitting a Notice of Patent Infringement with Amazon. You can only seek to take down the infringing ASIN. You cannot seek money damages through Amazon but if a substantial amount of infringement occurs on Amazon, taking the ASIN down might be enough. Their procedures favors patent owners and not ASIN owners, as discussed below. Below is a quick start guide to help you navigate this process effectively, including essential steps, considerations, and potential risks.
Read more about Amazon’s IP Complaint process including for trademark infringement and copyright infringement.
Step 1: Sign Up for Amazon Brand Registry
The simplest and most effective way to report patent infringement on Amazon is through Brand Registry. Amazon makes it much simpler to report patent infringement through Brand Registry so I’d go with the flow. Amazon Brand registry provides various tools to help with reporting patent complaints.
Trademark Requirement:
To enroll in Brand Registry, you must have a pending trademark application or registered trademark with the USPTO. Why? I’m not sure the guess is that they want real businesses and not patent trolls to use their platform.
You can have one filed with their trademark lawyers but I’ve noticed that they tend to file the stylized version of your mark which is not preferred. I recommend finding a reputable trademark attorney to help with the process. Find out more about my Trademark Services.
Brand Registry Tools:
Brand Registry gives you access to advanced enforcement tools, such as the Search and Report Tool, which makes it easier to identify and report infringing ASINs (Amazon Standard Identification Numbers).
Only Brand Registry users can escalate patent disputes to the Amazon Patent Evaluation Express (APEX) program for complex cases.
If you are not enrolled in Brand Registry, you can still file a complaint using Amazon’s Report a Violation tool.
Step 2: Gather and Save Evidence of Infringement
Before filing a complaint, you must gather evidence to support your claim. You must save the evidence. Don’t be like an attorney I know. He didn’t save the evidence of infringement. When the infringer received the complaint, the infringer deleted all of the data and all of the evidence was lost. The big lesson here is to save the data.
Conduct a Test Buy:
Purchase the product in question from Amazon to verify that it infringes on your patent claims.
This step is essential because products sold under an ASIN on Amazon are not static. Sellers are allowed to change the product design so long as it isn’t a material change. If your patent is directed to an internal component used by the product, the seller can swap it out for a non infringing component without violating Amazon’s policies. Do the test buy to get the evidence and save it.
Document Everything:
- Take screenshots of the entire ASIN listing.
- Take clear photos and videos of the infringing product, focusing on the features or functions that violate specific claims in your patent.
- Save receipts, packaging, and delivery records to prove the date and source of the purchase.
- Archive the ASIN’s URL and take screenshots of the product listing at the time of purchase.
Step 3: Prepare the Complaint
When preparing your complaint, visuals and clarity are key. Amazon’s enforcement teams are not patent attorneys, so presenting a well-documented and visually clear case increases your chances of success.
Focus on the Claims of Your Patent:
Amazon Seller Support team is busy. Don’t focus on the wrong things. Focus on the specific claims of your patent. Don’t focus on fairness. You can intermittently highlight it if it comes up but it shouldn’t be a focus of the complaint.
Clearly explain how the infringing product violates your patent claims. The focus is not on the description in your patent but on the claims.
Use Visual Evidence:
Include side-by-side photos or diagrams comparing the infringing product to your patented invention.
Visual clarity helps Amazon quickly understand the infringement and make a decision. They are not patent attorneys.
Escalation for Complex Issues:
If the infringement involves a technically sophisticated feature, be prepared to escalate the case to the APEX Program (see Step 5).
Step 4: Evaluate the Risks Before Filing
Before submitting your complaint, assess potential risks, especially the possibility of facing a declaratory judgment (DJ) action. A DJ Action is an action brought by the infringer asking the court, not Amazon to adjudicate the dispute. The infringer could also submit a third party request for ex parte reexamination if they had prior art.
What is a DJ Action?
A DJ action occurs when the ASIN owner files a lawsuit to invalidate your patent or seek a court declaration that their product does not infringe. Through Amazon, the infringer can’t argue invalidity, they can only argue for noninfringement.
This greatly limits the infringer’s ability to prevent having their ASIN taken down.
Defending a DJ action can be expensive and time-consuming, so it’s crucial to research the ASIN owner to assess the likelihood that they might file the DJ Action.
Research the ASIN Owner:
Investigate the seller’s background to assess their resources and potential willingness to litigate. Consider questions like:
- How much revenue does the seller generate?
- Do they have a history of legal disputes?
- Are they likely to invest significant resources in defending the revenue they generate for their product?
By researching, you can make an informed decision about whether filing a complaint with Amazon is worth the potential legal risk.
Step 5: Submit Through Amazon Brand Registry
Once your evidence has been saved and complaint are ready, submit it through Amazon Brand Registry for review. The benefit of taking down ASIN through Amazon instead of filing a lawsuit is cost. It’s much cheaper to have your patent dispute resolved at Amazon, especially if that is where a majority of the infringement is occuring. Moreover, seller can’t attack your patent based on invalidity.
Amazon reviews your complaint to determine if it provides sufficient evidence to justify removing the ASIN.Keep in mind that Amazon does not conduct detailed legal analyses. If your complaint is overly technical, they may decline it and you should escalate it to the APEX program.
If Amazon rejects your complaint because it is too complex, request escalation to the Amazon Patent Evaluation Express (APEX) program. APEX involves an experienced patent attorney who reviews the case and issues a binding decision. The cost is around $4,000 for the patent owner to participate in the APEX program. APEX resolves disputes within four months and at a lower cost than traditional litigation.
Conclusion
Submitting a Notice of Patent Infringement through Amazon Brand Registry is an effective way to protect your intellectual property and remove infringing products from the marketplace. However, success depends on careful preparation: enrolling in Brand Registry, gathering strong evidence, focusing on your patent claims, and presenting a clear, visually supported complaint.
While Amazon provides powerful tools to combat infringement, be mindful of potential risks such as DJ actions, and always conduct thorough research on the ASIN owner before filing. For complex disputes, the APEX program offers a fair and efficient resolution process, making it an excellent option for patent owners seeking to enforce their rights without litigation.
Take Action to Protect Your Patents
Don’t let patent infringement on Amazon go unchallenged. Protect your intellectual property, safeguard your business, and maintain your competitive edge by acting today. Whether you need assistance with enrolling in Amazon Brand Registry, gathering evidence, or preparing a strong complaint, professional guidance can help ensure success.
Call (949) 433-0900 to schedule a consultation and get expert advice on protecting your patents.