Has your listing or product been removed from Amazon because someone accused you of infringing their patent or other intellectual property?
You may be wondering why how this happened and what can be done. In short, a patent holder became aware of your product on Amazon. They reached out to Amazon, accused you of infringing their patent, and asked Amazon to remove your product. Amazon’s goal is to limit their liability when selling an allegedly infringing product on their site. For that reason, they may not spend a lot of time (if any) looking at the merits of the case. They may not even compare the patent to your product. They may simply remove your product. This puts you in the position of having to prove that you do not infringe (the equivalent of guilty until proven innocent.) While this may be unfair, it is legal. So how do you get your product listing reactivated?
There are two routes to getting your product back on Amazon:
- Come to an agreement with the patent holder; or
- Fight it.
There is no one-size-fits-all approach. The best option for you may depend on a variety of factors, including: your product, sales, profitability, funds available, the patent, the patent owner, and many others.
A starting approach would be to have a qualified patent attorney analyze your product and determine if you are infringing. While it may be tempting to make this analysis on your own, patents are a highly complicated area of law. Often, patents are difficult to understand, and language used in a patent (as with many legal documents) may mean something different when compared to its use in everyday English. Therefore, a good starting point is obtaining a professional opinion by speaking with a patent attorney.
Discussions with the Patent Holder:
If the patent holder agrees, Amazon will reactivate your listing. You or your attorney can reach out and begin negotiations.
It’s likely the patent owner’s goal is to establish a licensing agreement. If the price is right, a deal may be struck. When negotiating, there are many non-monetary factors to consider, such as an ability to utilize their patent marking rights, which can benefit the future sales of your product. Licensing agreements can take many forms and can include a variety of components: flat fees, royalty rates, exclusivity, territory, etc. Given their complexity, I recommend having an attorney assist in negotiating and reviewing the agreement. An attorney can also prepare a letter to the patent holder leveraging the strengths of your case or even asserting that their claim is baseless and has no merit. If an agreement cannot be reached, your best choice may be to fight it.
Fighting to Get Reactivated
Amazon is a large company with deep pockets. Instead of fighting against Amazon, it may be easiest to work with Amazon, follow their procedures, and show them you are in the right. Assuming the patent holder won’t come to an agreement, you’ll want to convince Amazon your product does not infringe.
The most surefire way to reactivate your listing is a court order stating your product does not infringe. Getting a court order can be a very long and expensive process. The 2019 AIPLA Report of the Economic Survey showed that in patent litigation where less than 1 million dollars is at risk, each party will spend approximately $700,000 to go through trial! This is expensive for both parties, the patent holder and you. That same survey listed the cost to invalidate a patent through an IPR proceeding (a USPTO-based procedure used to invalidate patents) may cost an average of $400,000, not an insignificant number for a small business owner.
For those not ready to spend potentially hundreds of thousands, you can submit evidence of non-infringement to Amazon, such as a letter from legal counsel. Each case is unique. It may be possible to submit other evidence supporting noninfringement. A qualified patent attorney will be in the best position to help you formulate those arguments and present your case.
Reach out to me at 855-226-9661. Dunlap Bennett & Ludwig can help you with each step of the process. We will discuss all of your potential options and help you choose the best route forward for you.
To learn more about Dunlap Bennett & Ludwig and how we assist you with your legal matters, contact us by calling 800-747-9354 or emailing [email protected].