Patent Disputes and Amazon APEX

By Paul S. Rafelson, Founder, Rafelson Law PLLC

How does Amazon APEX work?

According to Amazon’s published description, APEX lets the owner of a U.S. utility patent, or the owner’s agent, obtain a neutral evaluation of an infringement claim against listings in the Amazon store. The patent owner starts the process inside Brand Registry, which needs a registered or pending trademark. Owners without one use Amazon’s public report form, and Amazon still routes a utility patent claim to APEX. We handle the trademark filing and enrollment if you need them. Amazon lists eligibility requirements, including that the patent be an issued U.S. utility patent; design patents, non-U.S. patents and expired patents are not eligible.

If the application is accepted, the reported sellers can opt in to the evaluation and defend their listings. A seller who does not opt in loses its listings, and if the evaluator finds for the owner, so does every seller who did. A patent owner that obtains a result may also be able to use an APEX ID in later U.S. utility-patent reports. Deadlines, forms and eligibility are Amazon’s and can change, so the notice and agreement you receive control.

What are my options if I am the accused seller?

• Take part in the evaluation. Opting in lets you argue your product does not infringe. The evaluator does not decide general validity challenges. Those belong in court or at the Patent Office. Amazon’s procedure allows only narrow exceptions: a finding of invalidity or unenforceability by a court, the Patent Office or the ITC, or proof the product was on sale a year or more before the patent’s earliest effective filing date, shown by evidence the evaluator checks on its own. Each side pays the evaluator a deposit set by Amazon. The winner gets it back. Check the amount and the opt-in deadline in your notice. Opting in also means a neutral evaluator, not you, decides the question for Amazon’s purposes.
• Resolve it directly with the patent owner. A written settlement, a license or a design change can end the dispute. The terms should address existing inventory and future listings.
• Do nothing. Silence is a decision. Amazon removes your listings, and another seller’s opt-in does not protect you. The patent owner keeps every court remedy. Ignoring the notice costs you the listing and leaves the patent claim open.
• Go to court. When the stakes are high enough, the accused seller does not have to wait to be sued. A seller facing a credible threat has a way to put the question to a federal court first (28 U.S.C. § 2201). Whether it fits depends on the facts, and we tell you when it does.

Infringement is measured claim by claim, and a presumption of validity does not make a patent unbeatable. Whether to fight, settle or redesign turns on both questions, and getting either one wrong is expensive. We make the call with you before the opt-in deadline.

What can a patent owner do?

An owner of an issued patent can use APEX for a utility patent, send a demand letter, negotiate a license or sue. Patent cases go to federal court. The venue rules limit where a U.S. seller is sued, and a foreign seller gets no such limit. Court is where money damages and an injunction live, and neither is automatic. An owner who asserts a patent it cannot support ends up on the wrong end of the dispute.

How do the routes compare?

How should I respond to a patent-based listing removal?

A patent-based removal is decided by the claims, not the photos. Sellers often lose because they argue about how the product looks instead of what each claim covers, or they miss the opt-in window and lose the listing without a hearing on the merits. Products on sale more than a year before the patent was filed, the supplier’s design history and the supplier contract often change the answer. We read the claims against your product, find what came first and tell you which route to take before the deadline.

A listing removal can also be cited in an account notice. See Amazon IP claims, ASIN suspension and listing removals and Amazon account suspension.

When does a patent dispute belong in court?

A court makes sense when the dispute is about more than a listing: significant inventory, repeated claims against the same product line, a demand for money, a patent you believe is invalid or a threat that affects financing or a sale. Court is also where a patent owner goes to recover damages and to stop sales outside Amazon. See our pages on litigation and demand letters.

What should I gather first?

• The notice, the patent number, the ASINs and the response deadline.
• A sample or specification of each accused product, and the supplier’s design files.
• Sales history for the accused ASINs, and your current inventory.
• Supplier agreements and any earlier communications with the patent owner.

How do I get started?

Contact us. Tell us the patent number, the product and what Amazon or the patent owner has sent, and we will tell you whether we can help.

Frequently asked questions

Related pages

Sources and notes

• Amazon, “Amazon Patent Evaluation Express (APEX) program”, Amazon staff announcement, Seller Forums.
• Amazon, Utility Patent Neutral Evaluation Procedure.
• Amazon Seller Central Help, Amazon Patent Evaluation Express (APEX) (sign-in required). Read the current Amazon agreement for the terms of a particular dispute.
• 35 U.S.C. §§ 271(a), 282, 284; 28 U.S.C. §§ 1338(a), 1400(b), 2201; MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017); In re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).