Chad Swantz is a patent attorney and co-owner of Suiter Swantz IP. Chad graduated with a Bachelor in Science in Electrical Engineering from the University of Nebraska-Lincoln, a Juris Doctor of Law from the University of Nebraska College of Law, and a Master of Business Administration from the University of Nebraska Omaha.
Courtney Cournoyer is a summer associate at Suiter Swantz IP. Courtney graduated from the University of Nebraska-Lincoln with a Bachelor in Science in Chemical and Biomolecular Engineering.
Amazon Protects Patent Owners Through Utility Patent Neutral Evaluation Process
Amazon has become the premier marketplace for online shopping. In particular, the ease that sellers are able to utilize Amazon’s marketplace to sell their own products sets Amazon apart from other online retailers. However, with this process being open to any seller that registers with Amazon, intellectual property concerns arise. In 2019, Amazon began its Patent Neutral Evaluation process as a way to strike a balance between patent holders enforcing their intellectual property rights and sellers facing accusations of infringing patents.
In essence, the Utility Patent Neutral Evaluation (UPNE) provides a relatively inexpensive method for US Utility patent holders to enforce their patents while also allowing a neutral process for accused sellers to provide a defense to an infringement allegation without resorting to federal patent litigation. The UPNE does not have a discovery process, oral arguments, nor an appeal process. Additionally, the UPNE will not provide damages, attorney’s fees, nor any other available remedies for the patent owner. The evaluation itself is a limited process, only considering one claim from an unexpired US Utility patent.
Patent owners may request to begin this process and submit up to 20 Amazon Standard Identification Numbers (ASINs) that they believe may be infringing on their patent. Amazon may reach out to the sellers of the accused ASINs may and give the sellers the option of having the ASINs accused of patent infringement removed from Amazon or to opt into the process. If a seller does not participate or respond within three weeks, Amazon will remove the accused ASINs.
If one or more sellers decide to participant in the process, a neutral evaluator will be selected by Amazon to assess the infringement claim. The neutral evaluator is likely to be an attorney experienced in patent disputes. Both the patent owner and seller must submit a $4,000 deposit to the evaluator within two weeks in order to continue the UPNE. Once payment is received by both parties, each side will have a chance to submit their arguments to the evaluator. The patent owner will likely be allowed 21 days to submit their initial arguments with the seller allowed 14 days to respond and the patent owner allowed another 7 days to reply back.
Within 14 days from the patent owner’s reply, the evaluator will announce whether they have found that the patent owner is likely to prove that the ASINs infringe. The prevailing party will have their $4,000 returned. If the patent owner is found to show they are likely to prove that the ASINs infringe on their patent, Amazon will remove the ASINs.
When compared to typical patent litigation, the UPNE offers a quick process, with expected completion expected in a couple months instead of one or more years which it typical for federal patent litigation. The deposit of $4,000 is also much more inexpensive when compared to litigation, which can cost hundreds of thousands of dollars to millions of dollars. Amazon’s UPNE process offers an accessible solution for patent owners to enforce their Intellectual Property rights quickly and efficiently, while also providing a fair manner for sellers to defend their products against allegations of patent infringement.