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Patent Owners/Licensors: Avoid This Pitfall When Enforcing Your Rights on Amazon

Before having an Amazon listing (or ASIN) taken down for patent infringement, a patent owner should be sure that he or she wants that listing to remain down indefinitely. If a patent owner is interested in licensing his or her patent to a seller, a takedown of all the seller’s offending ASINS might not be the best solution.

Oftentimes Amazon sellers are not interested in taking a license for patents. A successful takedown via infringement report or APEX program provides the right amount of motivation to bring Amazon sellers to the negotiating table. During and/or after negotiations, sellers often demand that their ASINS be reinstated.

However, Patent owners should be wary about reinstating ASINs. Under current Amazon policies as they have been communicated to me, Amazon refuses to take down previously reinstated ASINs. For example, let’s say a patent owner and seller reach a licensing agreement, so the patent owner retracts the complaints against the offending ASINs so that the ASINs are reinstated. If the seller later breaches the agreement (such as by refusing to pay royalties), the patent owner cannot have the ASINs taken back down again without a court order. This effectively results in a royalty-free license.

I should note that this policy may change. Amazon’s reinstatement policies, like many of their internal policies, remain somewhat of a black box. They are not published, and one often has to engage with Amazon directly to determine the rules for any given situation.  However, in the meantime, patent owners should be aware of this policy.

In conclusion, if a patent owner is tempted to take down all the infringing listings of an Amazon seller, he or she should consider other options, such as taking down a single ASIN to get the seller’s attention.


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