As an Intellectual Property attorney, Mark Rosenberg specializes in working with clients who have intellectual property issues arising from the Amazon Marketplace.
Mark has significant experience representing intellectual property owners whose patent, trademark and copyright rights are being infringed on the Amazon Marketplace and Amazon Marketplace sellers who products or product descriptions are accused of patent, trademark or copyright infringement. He has designed programs to have infringing products taken down from the Amazon Marketplace and has had products wrongly accused of infringement reinstated. Mark has successfully represented intellectual property owners and Amazon Marketplace sellers in a number of Neutral Patent Evaluation Procedures.
The Neutral Patent Evaluation Procedure is an invite-only program that seeks to resolve patent infringement disputes between owners of utility patents and accused Amazon Marketplace sellers. Under the Procedure, the dispute is determined by a neutral third-party evaluator with a relevant legal background.
Mark, working with attorneys with technical degrees and patent prosecution backgrounds, guides clients through the Neutral Patent Evaluation process and thoroughly understands how to craft winning arguments. Check out Mark’s deep dive into Amazon’s Neutral Patent Evaluation Procedure on this episode of Law Brief.
1. Amazon notifies the patent owner that its dispute has been selected for the Neutral Patent Evaluation Procedure. If the seller does not agree to participate in the Procedure, the accused ASINs remain up and Amazon closes the matter. If the patent owner agrees to participate in the Procedure, Amazon sends a Neutral Patent Evaluation agreement to each seller accused by the patent owner of selling infringing products. Amazon gives each seller the option of either agreeing to participate in the Neutral Patent Evaluation Procedure or having the accused ASINs taken down. Sellers have three weeks to complete the agreement and submit it to Amazon. If both the patent owner and the sellers agree to participate in the Neutral Patent Evaluation Procedure, Amazon selects an attorney experienced in U.S. patent disputes as the neutral evaluator.
2. Amazon contacts the parties with instructions to remit the $4,000 fee to the evaluator. If the patent owner party does not submit the $4,000 to the valuator within two weeks, the Evaluation will not occur, the accused ASINs remain up and any money submitted by sellers returned. If a seller does not submit the $4,000 fee within two weeks, the accused ASINs taken down and the fee paid by the patent owner returned.
3. Once the patent owner and a seller have submitted their fees, the evaluator sets a schedule for submission of written arguments., The patent owner is allowed 21 days to submit its initial arguments, each seller then has 14 days to respond. The patent owner then has 7 days to reply.
4. Within 14 days of the submission of the patent owner’s reply, the Evaluator provides its decision. If the patent owner prevails, the accused ASINs are taken down and the owner’s $4,000 fee refunded. If the seller wins, the accused ASINs remain up and the seller’s fee refunded. The Neutral Patent Evaluation Procedure process does not include a provision for reconsideration. However, either party can commence a federal court proceeding regarding the dispute.
Learn more about the process here.
Mark’s work on behalf of Amazon Marketplace sellers has led to the reinstatement of many ASINs that were taken down due to wrongful allegations of design patent infringement.
Amazon has no separate program for design patent infringement disputes. Once a complaint is initiated, Amazon typically takes down the accused marketplace listing and notifies the seller that its listing is removed, stating that if the seller believes that the infringement allegation is incorrect, it should directly contact the patent owner. This protocol unfairly burdens sellers when design patent owners engage in anti-competitive conduct.
Mark represents copyright owners whose copyrighted designs, photographs and product descriptions are being infringed by Amazon Marketplace sellers. He assists these owners in securing copyright registrations and having infringing ASINs and product descriptions taken down.
Amazon removes products and product listings that infringe another’s copyright. Using this online complaint form, intellectual property owners can report instances of copyright infringement to Amazon.
|Rosenberg, Mark J. Partner and Co-Chair of Reputation Management Practice||Partner and Co-Chair of Reputation Management Practice||212.216.1127|