As the buying and selling of goods has migrated from brick-and-mortar stores to online marketplaces, geographic boundaries have been erased, creating extraordinary new opportunities for conducting business and engaging in cross-border retail sales.  But numerous legal and regulatory issues have arisen in this competitive marketplace, particularly in the context of intellectual property rights.  Fortunately, online retailers like Amazon have made significant strides in adopting tools to help rights holders enforce their patents against infringers.

Amazon provides two different tools for reporting patent infringement.  The first tool is a an electronic form that can be completed and submitted online.^[1]  Amazon will typically remove an accused product without further inquiry based on the submission of such a form,^[2] leaving it to the rights holder and the accused infringer to resolve the dispute between themselves.[^3] This tool is particularly effective when coupled with a court order finding infringement of the asserted patent,^[4] or with an infringement finding issued under Amazon’s second reporting tool—the Amazon Patent Evaluation Express (“APEX”) Program.^[5]

The APEX Program is inter partes and enlists the guidance of a neutral evaluator to remove Amazon from the process.  The neutral evaluator is an intellectual property attorney who receives multiple rounds of formal briefing from the rights holder and the accused infringer before issuing a decision on whether the rights holder is “likely to prove” infringement.^[6]  A losing party’s products are then promptly removed from Amazon.^[7]

The APEX Program originally was referred to as the Utility Patent Neutral Evaluation Program, or UPNE Program, and was launched as an invitation-only pilot program in 2019.  As its name suggests, the UPNE program was limited to utility patents. So too is the APEX Program, which became generally available to members of Amazon Brand Registry in April 2022. 

To become a member of the Amazon Brand Registry, one must have a registered U.S. trademark covering the goods at issue.^[8]  In other words, one must own a trademark to enforce one’s patents through Amazon Brand Registry.  But this is unlikely to be an impediment to most rights holders, as most sophisticated companies have registered trademarks for the brands under which they sell their products.  The rights holder does not need to submit a complaint for trademark infringement in order to avail itself of the APEX Program.

Participation in the APEX Program is voluntary and confidential,^[9] but requires each party that wishes to participate to deposit $4,000,^[10] with all prevailing parties having their deposits refunded at the end of the proceeding.^[11] Failure to participate in the program, however, results in the immediate removal of an accused infringer’s products from Amazon.  Otherwise, the rights holder is allotted 20 total pages of briefing, which it may divide between an initial brief and reply brief, while each accused infringer is allotted 15 total pages for a single responsive brief.^[12] A neutral patent attorney then considers the parties’ briefing and renders a decision, typically within 14-16 weeks from when the infringement was initially reported to Amazon.^[13]

Notably, invalidity is not a defense available under the APEX Program unless a district court, the International Trade Commission (“ITC”), or the U.S. Patent and Trademark Office (“PTO”) has found the asserted patent invalid.^[14]  Also notable is that the neutral evaluator’s infringement ruling can be used like a court order at Amazon.  It can be submitted through the Amazon Brand Registry with a standard electronic form (i.e., Amazon’s first enforcement tool discussed above) to remove other infringing products—a process that typically takes days, rather than weeks, to complete.

Compared to litigation before a district court, the ITC, or the PTO, Amazon’s patent enforcement tools are extremely fast and inexpensive.  And if the infringing products are primarily sold via online marketplaces, the impact of the resulting product removals can be far reaching.  These new tools for resolving IP disputes therefore have the potential to be powerful weapons in a rights holder’s fight against patent infringement.  Indeed, they may even become the enforcement mechanism of first resort for certain rights holders.  But using enforcement tools like Amazon’s APEX Program is not without limitation or risk.

In addition to being limited to utility patents, the page limits imposed on participants makes the APEX Program impracticable for complicated technologies and patent claims. And there is no discovery (e.g., depositions, document requests, etc.) permitted in the APEX Program, so infringement will have to be shown through publicly available materials.

As for risks, recent district court filings show that the use of Amazon’s APEX (and previously UPNE) Program may spawn retaliatory actions for declaratory judgement and tortious interference. In one such instance, a rights holder alleged infringement of two design patents to three different online marketplaces.^[15] The accused infringer responded by filing a district court complaint seeking declaratory judgment that their products did not infringe the two patents, as well as a declaration that both patents are invalid.  The court found that the rights holder’s actions gave rise to an actual case or controversy and denied its motion to dismiss for lack of jurisdiction.

In another instance, an accused infringer not only sought declaratory judgement of invalidity and non-infringement, it also alleged unfair competition and tortious interference against the rights holder.^[16] Although the accused infringer subsequently withdrew its tortious interference claim after successfully appealing to Amazon and having their products reinstated, this highlights one of the risks associated with using enforcement tools like Amazon’s APEX Program.  These risks, of course, can be mitigated by thorough and thoughtful infringement analyses.

Ultimately, patent owners faced with infringing products sold on Amazon may consider the APEX Program as a potential first step in seeking relief from patent infringement, particularly if the patents are directed to straightforward technology that can easily be mapped to the accused products using public information.  The program offers speedy, cost-effective, and meaningful results when used responsibly.  Rights holders are therefore likely to take advantage of this recently-launched enforcement tool in dealing with infringement on the Amazon platform. But the process is still fairly new to most, so it will be important to engage experienced counsel to help ensure compliance with its various requirements and navigate the potential risks associated with it.

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