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Self-portrait of Jeremy in his home office.

 

Jeremy Green Eche is a branding attorney and the founder of JPG Legal and Communer, a marketplace for registered trademarks. He is the attorney of record for over 4,000 U.S. trademark registrations. In 2019, JPG Legal was ranked the #16 law firm in the United States by number of federal trademark applications filed. Eche graduated from Northwestern University School of Law on a full scholarship. Thomson Reuters selected him as a Super Lawyers Rising Star in Intellectual Property for 2021-2023.

 

Jeremy Green Eche is a branding attorney and the founder of JPG Legal and Communer, a marketplace for registered trademarks. He is the attorney of record for over 4,000 U.S. trademark registrations. In 2019, JPG Legal was ranked the #16 law firm in the United States by number of federal trademark applications filed. Eche graduated from Northwestern University School of Law on a full scholarship. Thomson Reuters selected him as a Super Lawyers Rising Star in Intellectual Property for 2021-2023.

 

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Eche is based in Brooklyn in New York City. He formerly served as in-house General Counsel for Teamsters Local 922 in Washington, DC. Eche is married to Stephanie Eche, an artist and creative consultant who co-founded Communer with him. He has moderate Tourette syndrome.

 

You can contact him at info@jpglegal.com.

Can You Sell Patented Products on Amazon?


Google Patents bird feeder camera search screenshot

Note from Jeremy: This is a guest post from patent agent Brad Fach of PatentFile.org. We’ve been sending patent clients to them for several years now and everybody has been very happy with their service, so I thought our readers might appreciate some advice from Brad on an issue many of my clients deal with. We do not have any sort of affiliate or compensation arrangement with them.

Amazon is the world’s largest marketplace by revenue, providing businesses with unparalleled exposure to a global market. The platform’s user-friendly interface makes it easy for businesses to showcase and sell their products to a large number of consumers. But can you sell patented products on Amazon?

Patents provide something called exclusionary rights which means that a patent owner can stop or exclude others from making, selling, or importing their patented product or service in a particular country where they have an issued patent.  When a product is covered by a patent, only the patent owner or their legal licensees, such as an approved reseller, can sell the patented product on marketplaces like Amazon in the various countries where they have a valid patent.   

Interestingly, a patent does not give you the right to make or sell anything.  It only provides exclusionary rights allowing the patent owner to stop others from making and selling the patented product.  

Patents can be expensive with the average cost to patent an idea ranging from $5,000 for a simple device up to $15,000 or more for more complex technologies.   To justify the high cost, a patent owner should have a good business plan and solid understanding on how they are going to earn money from their new invention.  

Selling a patented product on Amazon is one possible method, but other ways to monetize a patent include:

  • 1. Selling or licensing your patent to a company
  • 2. Using your patent to exclude competition and sell your patented product at a premium
  • 3. Using your patent as an investable asset to raise money and investors for your invention

Before selling anything online or instores, it is always a good idea to do a patent search to try and determine if you can legally sell your product on Amazon or through other marketplaces.  In some industries such as pharmaceuticals it is relatively easy to determine if a drug is covered by a patent because the US government has established practices such as the FDA’s Orange Book which will show you what patent(s) cover a particular new drug.  However, in most other industries the seller is left wondering if their products are covered by patents that are owned by other people or businesses.

Thankfully there are dozens of free online tools available to search for patents.  The downside is that there are millions of active patents in just the United States alone, which makes doing a patent search feel like finding a needle in a haystack.   Perhaps the easiest tool for patent searching is Google’s free patent database accessible at  patents.google.com.  

The search interface and process should feel familiar to anyone who has spent time on Google’s search engine in the past.  Search results from this interface will list patent records from most industrialized countries around the globe.   If we are primarily concerned with finding issued and valid patents that may prevent us from selling a patented product on Amazon US, we will need to filter our search results to only show US-granted patents.

In the example below, we are searching for a bird feeder that has a camera and we have used the advanced search feature to filter by country (1) and only granted patents (2).  

At this point you have likely found several granted patents that may appear to cover the product you are trying to sell on Amazon but how do you know what each patent legally covers?   The answer is shown in a part of the patent called the “claims”.   Patent claims are essentially a summary of the key parts of the patent and they define what is actually legally covered by that particular patent.  

For example, if a bird feeder patent shows a round bird feeder example and a rectangle bird feeder example, but the patent claims only cover the round bird feeder example then that particular patent only covers round type bird feeders.

In Google Patents the claims are shown in the right hand column under the heading of “Claims”:

A few years ago Amazon adopted new processes to report and take down patented items.  

The Amazon Patent Evaluation Express (APEX) Program involves a neutral patent evaluator to oversee the dispute and is the most widely used system to stop patented products from being illegally sold on Amazon. To participate in the APEX Program, the patent owner and the amazon seller accused of infringing the patent must each deposit $4,000.  Should the seller refuse to participate, their Amazon listing will be removed.  

An independent patent attorney will review the patent and determine if the amazon product infringes at least one patent claim. The winner in the dispute will get their $4,000 back while the loser will forfeit their $4,000.

While the APEX Program offers a fast and cost-effective means for resolving patent disputes, it still has limitations that include page restrictions and no discovery, potentially making it impractical for complex or extremely valuable technologies. 

If you are intending to sell a patented product on Amazon, there are a few ways you can do this legally.  You can contact the patent owner and ask them if you can simply buy their product and resell it on Amazon for a mark up.   There are entire business models built around this reselling process.  

Another common strategy is to ask the patent owner to issue you a license to make and/or sell the patent product.  Typically within a license agreement there are (a) upfront fees, (b) ongoing royalties as a percentage of sales, and (c) a requirement that that seller assume all risk and liability for sales of the patent product.  

A third option may be to buy the patent outright from the seller through a patent purchase and assignment agreement.   As with trademarks, the price for each patent can vary and will ultimately depend on the strength of the patent and the size of the addressable market for each product.     

Brad Fach is a registered patent filer with the US Patent and Trademark Office and has filed over 500 patent applications over the past 23 years.  He is the founder of the blog PatentFile.org, an entrepreneur, and inventor.   Brad enjoys working with new inventors and start-up companies on patent strategy, patent writing, and obtaining strong patents.  


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