The Amazon Patent Evaluation Express (APEX) is a program initiated by Amazon to resolve patent infringement disputes quickly and efficiently within its marketplace. The APEX procedure allows patent owners to assert claims of patent infringement against sellers on Amazon's platform. The process is designed to be faster and more cost-effective than traditional legal channels. See Amazon Brand Protection Report, March 2024 at 12 (reporting that APEX cases are being decided in an average of 30 days).
Here’s a step-by-step guide on how APEX works from the perspectives of the patent owners, Amazon sellers (potential infringers), and the neutral evaluator:
1. Patent Owner's Perspective
Step 1: Submission of Claim
- The patent owner starts by filing a claim of patent infringement through the APEX system on Amazon. This submission includes proof of patent ownership, the specific patent (or patents) allegedly infringed, and the listings (ASINs) on Amazon that are claimed to infringe the patent.
- See Recent Fed. Cir. ruling (2023-1184) affecting decision by patent owner on which Amazon sellers (alleged infringers) to target given the potential of the sellers filing declaratory judgment suits in unfavorable fora or timing.
Step 2: Payment of Fee
- The patent owner must pay a fee to initiate the evaluation process. This fee is used to compensate the neutral evaluator selected to review the case. The fee is fully refundable if they prevail.
Step 3: Amazon Notification
- Amazon notifies the seller accused of infringement about the claim, providing them the details and an opportunity to respond.
2. Amazon Seller's Perspective
Step 1: Notification of Claim
- Upon receiving a notification from Amazon, the seller reviews the infringement claim and decides whether to contest the claim or remove the listing.
Step 2: Response
- If the seller chooses to contest the claim, they must also pay the same fee as the patent owner to proceed with the APEX process. This fee is also fully refundable if they prevail. There are also provisions where this fee could be refunded if a claim is canceled, and the parties could also settle their claims, settlement including how to dispose the fees.
Step 3: Submission of Evidence
- The seller submits any evidence that the product does not infringe the patent claimed or argues that the patent has been held invalid or unenforceable by another tribunal, etc.
3. Neutral Evaluator's Perspective
Step 1: Appointment
- A neutral evaluator with expertise in patent law and the subject matter of the relevant product(s), is assigned to the case. Both the patent owner and the seller contribute to the evaluator’s fee.
Step 2: Review of Submissions
- The evaluator reviews all the documents, claims, and evidence submitted by both parties.
Step 3: Decision
- The evaluator issues a decision on whether the accused products likely infringes the patent in question. This decision is typically rendered within a few weeks.
Step 4: Implementation of Decision
- If the evaluator finds infringement, Amazon will typically remove the infringing listings. If no infringement is found, the listings remain active.
Step 5: Optional Appeal
- The decision by the neutral evaluator is final in the context of Amazon’s marketplace. However, either party may pursue traditional legal actions in court regardless of the APEX decision.