Authors: Louis-Pierre Gravelle & Jules Gaudin
Since mid-March, with some regions implementing measures well before then, or thereabouts, social distancing measures have been implemented in many countries; shops, restaurants and businesses are closed to respect these measures, and the court systems at least temporarily halted. At one point, over half of the world’s population was under some form or lockdown.
Online shopping has exploded as a result, and industry behemoth Amazon has seen its sales increase by 26% in the first quarter of 2020. Clearly, then, patent infringement can be an issue for a rights holder, especially if the products are sold on Amazon, or other online retailers. Given the cost, and slower than usual pace of court proceedings, what is an IP rights holder to do?
Enter Amazon’s experimental “Utility Patent Neutral Evaluation Program” (“UPNEP”), introduced in 2019. This programme promises to provide a cost-effective and streamlined procedure for resolving infringement disputes between a patent owner and a third-party Amazon seller. Currently, this procedure is available only for US utility patent holders on Amazon.com. Moreover, the evaluation can only involve a single claim of the patent.
What are the options for rights owners in case of patent infringements?
When a patent owner believes that an Amazon seller is offering infringing goods on Amazon, the owner can report this infringement by either:
- Filling-in Amazon’s publicly available online form; or
- Use Amazon’s Brand Registry Program (this option is only available to a patent owner that has a brand registry account).
It should also be noted that a patent owner can also provide a court or International Trade Commission order (hereinafter “ITC”) finding patent infringement.
Once Amazon receives a report of infringement, it can:
- Provide the infringement report to the seller and ask the parties to resolve the dispute themselves; or
- Take no action if the report is rejected; or
- Take down the seller’s product listings and any other action it deems necessary if the report is accepted.
How does the UPNEP work?
The UPNEP appears to have been designed for patent owners seeking to enforce patents on Amazon without a court or ITC order. In short, it is an out of court procedure that allows both sides the opportunity to be heard and infringement to be decided by a neutral third party.
When Amazon receives a request from the patent owner and the list of alleged infringing products, it forwards to both parties a neutral patent evaluation form. If both parties agree to participate in the program, they both deposit 4000$US, and Amazon designates a neutral third-party patent lawyer to evaluate the claim. The prevailing party is reimbursed the 4000$ deposit, the other deposit being retained by the third-party patent lawyer.
The good: what are the advantages of using this programme?
- Cost-effective; for a reasonable amount of money, a rights holder can obtain a determination on infringement, and if successful, gets the deposit back
- Quick and efficient process with an independent neutral evaluator
- The entire procedure is written
- No discovery, no witnesses
- Could be an effective recourse against Sellers who do not reside in the United States.
The bad: what are the disadvantages of using this program?
- Need to waive any claim of infringement by Amazon
- Everything obtained in this process is confidential and cannot be reused
- More particularly, parties must agree to not seek discovery relating to the UPNED in any later legal proceeding
- Pages limits (20 pages for patent owners, 15 pages for sellers) for the written submissions.
The ugly: does this actually work?
One would think that platforms such as Amazon offering such a dispute mechanism would indicate that they take IP rights seriously, and view infringement of such rights as a sanctionable act. Providing the neutral patent evaluation, along with their Brand Registry Program, seems like good corporate citizenship, as an alternative to lengthy and expensive litigation.
There are reports however that Amazon might have acted prematurely by taking down alleged infringing products without due consideration. One example, Wanna Play Products Inc. v. Emery et al., alleges that Amazon took down products, based in part on an allegation of infringement on a patent granted in 1895 (yes, you saw that right – over a hundred years ago), and another patent related to combustion engines. Although this case did not involve the neutral patent evaluation program, one will recognise that there is potential for abuse by rights holders.
Still, addressing IP infringement on such platforms deserves credit, although the Amazon programme could be refined (i.e. by permitting consideration of more than one independent claim, or opening up the complaint mechanism to granted patents of other jurisdictions). If other online retailers follow suit, and offer alternative dispute resolution mechanisms, it may signal to rights holders generally, and potential infringers specifically, that online retailers are no longer the Wild West when it comes to IP infringement.
FICPI’s view and involvement
FICPI’s independent IP attorney members help organisations protect and build value in their IP assets. As a worldwide organisation, FICPI members bring insights and counsel from a wider external perspective and a commitment to high quality work, complying with all relevant regulations.
FICPI members can connect, share knowledge and grow through online events (while social distancing is in place), blogs, news articles and the LinkedIn group.
- Consider getting more involved with FICPI’s Study and Work committees: https://ficpi.org/organisation/ficpi-commissions
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 © CIPS, 2020. The authors are members of ROBIC, LLP.
 In a curious twist, information on the process is extremely difficult to find on the Amazon.com website. A post on Amazon’s blog “Amazon's response to our wrongful inclusion on the Notorious Markets list“ does indeed make a reference to the Utility Patent Neutral Evaluation programme, but the link to the program leads to an external website: https://www.theinformation.com/articles/amazon-tests-program-to-combat-patent-infringement
 Filed on January 2, 2020, Case number 1:2020cv00010, US District Court for the Northern District of Georgia