It has become more and more routine in the past few years for a client to call Woodard, Emhardt, Henry, Reeves & Wagner, LLP regarding an infringing item being sold on Amazon. Often the seller is new and/or located overseas. Sending a letter to Amazon would typically trigger a standard response in which the seller’s identifying information is provided and you were asked to work it out with them. Filing a lawsuit is extremely expensive, particularly when the seller doesn’t reside in the United States. Moreover, filing a new lawsuit with each new Amazon listing could be cost prohibitive. As such, there really wasn’t any quick and efficient way for deal with this type of infringement.
In the past, the most effective solution was to seek and obtain an exclusion order from the International Trade Commission, which Amazon and other online marketplaces would recognize and promptly remove infringing listings. However, Amazon has recently launched a pilot program which is intended to resolve this situation, while giving both patent owners and sellers a fair opportunity to be heard.
The program is currently by invitation only, but we have successfully utilized it to remove dozens of infringing listings on behalf of a number of our clients. The program allows the owner of a utility patent to submit a takedown notification against a product listed on Amazon.com. The takedown notification is limited to a single claim of a utility patent. Upon receiving the complaint, Amazon notifies the seller, who has twenty-one days to contest the infringement allegation. In order to contest, the seller must agree to a quasi-arbitration which focuses solely on the question of infringement. In addition, the seller must submit $4,000 to a patent practitioner selected by Amazon as the neutral evaluator. If the seller does not contest the claim of infringement, the listing is promptly removed.
Assuming the seller does contest, the patent owner must also submit $4,000 with the neutral evaluator. The neutral evaluator then receives compact briefing over a roughly two-month period and issues a decision soon thereafter. Amazon will either maintain or remove the listing based on the neutral evaluator’s decision. Moreover, in the event the neutral evaluator finds infringement, that decision will control all future complaints of physically identical products. The “winner” of the evaluation receives their $4,000 back, with the losers’ $4,000 being retained by the neutral evaluator as his/her fee.
In essence, Amazon has created a path for utility patent holders to have infringing listings removed relatively quickly without Amazon itself being forced to make the often difficult judgment calls that patent infringement sometimes requires. The program is well suited for many of the infringing issues we deal with. However, its simplicity will likely cause some problems when patent owners, whose infringement claims involve more complex questions, seek to enter the program.
If you have infringing items listed on Amazon and would like to learn how Woodard Emhardt can assist you in promptly and efficiently removing those items, please feel free to contact Bill McKenna.