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How to Combat Copycat Products on Amazon: Amazon Brand Registry and the Amazon Patent Evaluation Express (APEX) Program, Part 2

Posted by Isabel Fox | Jun 28, 2024 | 0 Comments

As we mentioned in our previous article, the growing popularity of e-commerce comes with increasing amounts of “copycats.” These copycat products entice consumers away from the original products due to their cheaper prices, despite the fact that these lower prices are generally due to their inferior quality. 

To facilitate a solution to this issue, Amazon established two options for intellectual property (IP) rights owners to combat those infringing on their IP: the Amazon Brand Registry and the Amazon Patent Evaluation Express (APEX) program. This article will focus on the APEX program. To learn more about the Amazon Brand Registry, please see our linked article above.

The APEX program (previously known as the Amazon Neutral Patent Evaluation Procedure) was established in 2019 to enable patent owners to challenge sellers of products that infringe U.S. utility patents (foreign patents, U.S. design patents, and U.S. pending utility applications are not eligible).

Step 1

As indicated in the flowchart above, the process begins when a patent owner detects potential patent infringement.

Step 2

The patent owner submits an infringement complaint (via Amazon's Brand Registry) accompanied by a request to participate in the APEX program. The request generally includes the following:

  • Identification of the accused product(s) by their Amazon Standard Identification Number (ASIN), found on the product page listing.

o   Up to 20 ASINs may be included with each request.

  • Explanation of why the patent owner believes the accused product(s) infringe their patent.

o   This explanation can be a short, written explanation or take the form of a claim chart, which identifies each infringed element of a patent claim and compares each element to the relevant component of the accused product(s).

§  Note: Only one claim may be asserted in the APEX program. Multiple requests to participate in the program must be submitted if a patent owner wishes to assert more than one patent claim. 

Step 3

Amazon will then review the complaint and APEX application and determine if the cited patent is suitable for the APEX program. If the patent is deemed suitable, Amazon will send the patent owner an invitation to participate in the APEX program, and request that the patent owner complete and sign an APEX Agreement document. 

Once Amazon receives the completed APEX Agreement, they will notify the seller(s) of the accused product(s) (alleged infringer(s)) to inform them of the allegation of patent infringement and invite them to participate in the APEX program.

This step presents an opportunity for negotiation between the patent owner and the alleged infringer(s) and may result in one or more lucrative licenses for the use of the patent owner's IP. 

  • If a licensing agreement is made, the parties will not continue in the APEX program, and the patent owner will retract the complaint.
  • If, however, no agreement is reached or the alleged infringer(s) fail(s) to contact the patent owner, one of two things will happen:

o   If the seller(s) agree(s) to participate in the APEX program, the parties will move forward with the APEX program; or

o   If the seller(s) do not agree to participate in the APEX program, the accused product(s) will be removed from Amazon.

Step 4

To move forward with the APEX program, both parties must pay a $4,000 deposit to a third-party evaluator, who is a neutral IP attorney contracted by Amazon to conduct the Evaluation. 

  • Note: At the conclusion of the Procedure, the evaluator keeps the $4,000 from the losing party, and the successful party is refunded their $4,000. 

Both parties may submit written arguments to the evaluator. The evaluator determines the exact schedule for submission of arguments, though it usually occurs as follows:

  • The patent owner has 3 weeks to submit initial arguments showing infringement.

o   These arguments may include a claim chart, photo evidence showing physical similarities between the accused product(s) and the patent owner's product, and any other suitable evidence and remarks the patent owner wishes to submit.

  • The alleged infringer(s) has 2 weeks to respond to the patent owner's statements.
  • The patent owner may respond to the alleged infringer's remarks within one week.

The evaluator will then analyze the patent owner's submitted evidence of infringement, as well as any arguments submitted by the alleged infringer(s), and determine the likelihood of infringement on behalf of the seller of the accused product(s).

If the evaluator finds in favor of the patent owner, the infringing products are removed from Amazon, and the patent owner is refunded their $4,000 deposit. If the evaluator finds in favor of the seller, the products are not removed, and the seller is refunded their $4,000 deposit. 

There is no opportunity for either party to appeal the decision within the APEX program, though other, non-Amazon, opportunities are available (e.g., federal court action).

How Gallium Law Can Help

The APEX program can be a complex process and, as stated above, offers no recourse for the losing party. As such, it's important to hire an experienced IP attorney in order to have your best chance at successfully protecting your IP and preventing lost profits due to infringement on Amazon. The IP professionals at Gallium Law have experience with this process and are ready to assist you in protecting your patent rights from infringing product listings. Please call us at 651-256-9480 or fill out this Contact Form to schedule a free consultation.

*The information in this article is not legal advice and should not be relied on. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

About the Author

Isabel Fox

Isabel Fox is a registered patent agent and has been with Gallium Law since 2018. Her practice largely revolves around utility and design patent prosecution; including conducting patent landscape searches, drafting patent applications, and responding to Office Actions issued by the USPTO...


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