Amazon Patent Infringement Issues

This Scope of Services describes the legal services to be provided to Defendant/Seller (“Client”) in connection with responding to a claim submitted to Amazon’s Patent Evaluation Express (APEX) program alleging infringement of a U.S. utility or design patent (“APEX Claim”). The Attorney’s representation is limited to the APEX process and does not extend to litigation, USPTO proceedings, or other disputes unless separately agreed in writing.

Attorney will:

• Review Amazon’s APEX notice, asserted patent(s), claim charts, and accused product listings (ASINs).
• Evaluate the asserted patent for scope, enforceability concerns, and potential weaknesses.
• Analyze the Client’s product(s) to determine non-infringement, invalidity arguments permitted in APEX, or possible design/product modifications.

Advise the Client on eligibility, risks, timelines, and strategic options within the APEX program.

Attorney will prepare and submit the Client’s formal response to the APEX evaluator, including:

• Drafting a response, consistent with APEX Program rules (no claim construction disputes, limited evidence format).
• Preparing and organizing evidence, product photos, technical specifications, and diagrams to support the Client’s arguments.

Attorney will:

• Communicate with Amazon APEX personnel regarding procedural questions or clarification requests.
• Ensure the response is submitted within Amazon’s required deadlines.
• Forward all Amazon determinations and communications to the Client promptly.

Note: APEX prohibits attorney advocacy outside the written submission, and Attorney will adhere to all APEX restrictions.

Attorney will support the Client in preparing factual evidence, including:

• Reviewing product samples, packaging, images, and design documentation.
• Identifying technical distinctions between the Client’s product and the patent claims.

Preparing declarations or statements from the Client, engineers, or suppliers when appropriate.

Attorney will provide strategic guidance regarding:

• Likelihood of success within the APEX framework.
• Whether to consider settlement, product redesign, or voluntary removal of listings.
• Post-APEX options, including negotiation, licensing, or preparing for potential litigation outside Amazon.

Following the APEX evaluator’s determination, Attorney will:

• Explain the outcome and its effect on the Client’s Amazon listings.
• Advise on next steps, including reinstatement efforts, settlement negotiations, or dispute resolution options.
• Provide recommendations for ongoing compliance and reduced IP risk exposure.

Unless expressly agreed otherwise in writing, this engagement does NOT include:

• Filing or defending any federal or state court litigation.
• USPTO proceedings (inter partes review, ex parte reexamination, reissue, etc.).
• Negotiating or drafting long-form settlement or license agreements.
• Drafting patentability opinions, FTO opinions, or product engineering modifications.
• Representation regarding Amazon Brand Registry, other Amazon enforcement programs, or additional IP complaints.
• Business, import/export, customs, insurance, or regulatory matters unrelated to APEX.

Additional services may be provided under a separate engagement agreement.

Client agrees to:

• Provide complete, truthful information regarding the accused products.
• Supply timely access to product samples, supplier information, and documentation.
• Respond promptly to questions and requests necessary for preparation of the APEX response.
• Refrain from unauthorized communication with the opposing party that could conflict with Attorney strategy.

Representation ends upon the earlier of:

• Submission of the final APEX Response and Amazon’s issuance of the evaluator’s determination, or
• Mutual written agreement to terminate.

The purpose of this engagement is to assist the Client in evaluating and participating in Amazon’s Patent Evaluation Express (APEX) program, which enables patent owners to request expedited evaluation of potential patent infringement by Amazon sellers. The services outlined below focus on assessing eligibility, preparing the required submissions, and providing strategic guidance throughout the APEX process.

2.1 Patent Eligibility Review

• Review the Client’s issued U.S. utility patent(s) to determine alignment with APEX requirements.
• Confirm that asserted patent claims meet Amazon’s evaluability criteria (e.g., product-based, single claim, infringement determinable from publicly available materials).
• Identify potential limitations, risks, and recommended claims for APEX assertion.

2.2 Accused Product and Seller Assessment

• Review Amazon listings identified by the Client
• Compare listed products against the asserted patent claim(s).
• Identify sellers and ASINs appropriate for inclusion in the APEX request.
• Evaluate the likelihood that the claim chart will satisfy Amazon’s requirements.

2.3 Claim Chart Preparation

• Prepare a detailed preliminary claim chart mapping each claim element to corresponding features of the accused Amazon product(s).
• Ensure chart complies with Amazon formatting and evidentiary standards.
• Incorporate images, citations, and references to publicly available information.

2.4 APEX Application Support

• Prepare and submit the APEX request to Amazon, including all required forms, statements, and supporting evidence.
• Manage communication with Amazon’s APEX team on behalf of the Client (if authorized).
• Track deadlines and evaluation timelines.

2.5 Evaluation Phase Support

• Assist in responding to any Amazon notices, clarifications, or procedural questions during the evaluation period.
• Provide guidance on evaluator communications (if applicable).
• Advise on next steps in the event sellers choose to opt in, opt out, or challenge the evaluation.

2.6 Post-Evaluation Strategy

• Provide recommendations based on outcome, including:
  • Removal enforcement follow-up
  • Additional ASIN/ seller monitoring
  • Potential continuation of enforcement outside Amazon
  • Filing continuation applications or claim refinements (if relevant)

The services above may result in the following deliverables:

• Patent eligibility assessment memo
• Accused product/seller review summary
• One or more preliminary claim charts
• APEX request package (ready for submission)
• Communications log with Amazon (if applicable)
• Post-decision action plan

• Litigation or representation in court.
• Preparing formal legal opinions (infringement, validity, enforceability).
• Conducting a comprehensive freedom-to-operate analysis.
• Drafting or prosecuting new patent applications (unless separately engaged).
• Monitoring Amazon marketplace after the conclusion of APEX, except as explicitly contracted.
• Fees charged by Amazon or third-party evaluators.

• Provide accurate patent information, ownership documentation, and relevant Amazon listing URLs.
• Promptly deliver product samples or evidence if necessary.
• Approve submissions before filing.
• Provide timely communication regarding sellers or ASINs to target.