With businesses becoming increasingly dependent on the sale of goods at online marketplaces such as Amazon.com, especially during the pandemic, it has become increasingly important to quickly combat product listings that violate intellectual property rights. Amazon’s new Utility Patent Neutral Evaluation Process (UPNEP) provides a streamlined process for contesting product listings that infringe patent rights. The process generally takes 8-10 weeks to complete, which is relatively fast for such infringement proceedings.
The UPNEP is an arbitration process administered by Amazon to resolve claims for alleged infringement of utility patents. Each UPNEP proceeding is limited to a single claim of a single utility patent. At the outset, the patent owner reports the patent at issue and the allegedly infringing third-party product listing to Amazon. The third-party seller then receives a notification of the proceeding from Amazon and is provided three weeks to either concede or join the proceeding. Both parties must execute an agreement to proceed. If the third-party seller concedes, the listing is removed, while if they agree to join, a neutral evaluator (an attorney skilled in patent law) is assigned. At this point, both parties are responsible for wiring a $4,000 evaluator’s fee to the evaluator. After the fees are received, the evaluator establishes a schedule governing the exchange of briefs between the parties. Generally, the patent owner is allotted 21 days to submit initial arguments, the seller is provided 14 days to respond, and the patent owner is provided 7 days to optionally reply. The third-party seller’s brief is limited to non-infringement arguments, aside from evidence that its product was available for more than one year prior to a filing date of the patent, or a court order stating that the patent is invalid or not-infringed. After receiving both briefs, the evaluator issues a non-appealable decision within 14 days. The winning party’s fee is reimbursed while the losing party’s fee is kept by the evaluator. On the other hand, if the parties settle prior to completion of the proceeding, portions of both parties’ fees are reimbursed. After a listing of the product is removed resulting from a UPNEP decision, the listing may be restored only upon a showing of a court order or other arbitration ruling that the asserted patent is not infringed or is invalid.
In conclusion, the UPNEP provides a fast, efficient mechanism for combating infringing Amazon listings. It is also foreseeable that the UPNEP could be used as a mechanism for patent owners to obtain a neutral party’s opinion on the merits of a patent infringement claim, and as a tool to reveal non-infringement arguments of the third-party seller. To this point, however, in order for these proceedings to be deemed confidential, both parties must agree that the proceeding remains confidential and that they will not seek discovery relating to the UPNEP in future court proceedings.
About the Author:
William Hurles is an Associate in Dickinson Wright’s Troy office. He is a mechanical engineer and registered patent attorney that focuses his practice on intellectual property law, primarily in patent law. William can be reached at 248-433-7587 or whurles@dickinsonwright.com and you can visit his bio here.
