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How to Combat Copycat Products on Amazon: Amazon Brand Registry and the Neutral Patent Evaluation Procedure, Part 2

Posted by Isabel Fox | Feb 25, 2022 | 0 Comments

The Neutral Patent Evaluation Procedure

As e-commerce continues to grow in popularity, particularly during the ongoing pandemic as many of us avoid in-person shopping trips, consumers may have noticed several “copycats” or “dupes” for well-known brands appearing on sites like Amazon. While these cheaper (both in price and generally in quality) products may entice consumers looking to save a few dollars, businesses, particularly small businesses, are being hit hard by copycats. In an effort to address the issue, Amazon established two options for intellectual property (IP) rights owners to combat infringement of their IP: the Amazon Brand Registry and the Neutral Patent Evaluation Procedure. A previous article focused on the Amazon Brand Registry, and this article will discuss the Neutral Patent Evaluation Procedure.

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). As indicated in the flowchart above, the process begins when a patent owner detects potential patent infringement and they submit a request to participate in the Neutral Patent Evaluation Procedure. 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.
  • Explanation of why the patent owner believes the accused product(s) infringe their patent.
    • This explanation will usually 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 Neutral Patent Evaluation Procedure. Multiple requests to participate in the Procedure must be submitted if a patent owner wishes to assert more than one patent claim.
    • Up to 50 ASINs may be included with each request.

At this point in the process, Amazon will notify the seller(s) of the accused product(s) (alleged infringer(s)) to inform them of the allegation of patent infringement. 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 Neutral Patent Evaluation Procedure. If, however, no agreement is reached or the alleged infringer(s) fails to contact the patent owner, the patent owner may request participation in the Neutral Patent Evaluation Procedure.

If the request to participate is granted, the alleged infringer(s) is notified, and both parties (alleged infringer(s) and patent owner) are sent a Neutral Patent Evaluation agreement. The agreement sets forth the terms of the Neutral Patent Evaluation Procedure.

  • Both parties must accept the agreement in full in order to participate in the Neutral Patent Evaluation Procedure.
    • If the alleged infringer(s) does not accept the agreement, their accused product listing(s) is removed from Amazon.
  • Both parties must pay a $4000 deposit to the third-party evaluator (a neutral IP attorney) to participate in the Neutral Patent Evaluation Procedure.
    • Note: At the conclusion of the Procedure, the evaluator keeps the $4000 from the losing party, and the successful party is refunded $4000.

Once both parties execute the agreement, the case is passed to a neutral third-party patent attorney (the evaluator). 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.
    • These arguments may include a claim chart, as submitted with the request to participate in the Neutral Patent Evaluation Procedure.
  • 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 $4000 deposit. If the evaluator finds in favor of the seller, the products are not removed, and the seller is refunded their $4000 deposit. There is no opportunity for either party to appeal the decision within the Neutral Patent Evaluation Procedure, though other, non-Amazon, opportunities are available (e.g., federal court action).

How We Can Help

The Neutral Patent Evaluation Procedure 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.

As discussed in previous articles, a patent is a right granted by the government to exclude others from the manufacture, sale, offer to sell, or unauthorized use of the invention described and claimed in the patent. Patent applications are complex and detailed technical documents, and the process of getting a patent application granted can require significant time and resources. The professionals at Gallium Law are ready to assist you in securing, enforcing, and monetizing your IP rights. Please call us at 651-256-9480 or fill out this Contact Form to schedule a free consultation.

*The information provided in this article is not legal advice and should not be relied on as such. 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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