Amazon Design Patent Complaint: What to Do When Your Listing Is Removed

What to Do When Your Receive an Design Patent Complaint on Amazon:

The notice arrives from [email protected]. It names an ASIN, a complaint ID, and a patent number that begins with a D. Your listing is already down. Your Account Health page shows a new “Received Intellectual Property Complaint,” and if you sell through FBA, the inventory tied to that ASIN is now sitting in a warehouse you cannot sell from.

Design patent complaints are the most winnable category of intellectual property complaint on Amazon. They are also the category sellers lose most often, because almost everyone argues the wrong thing.

This article explains what Amazon actually does with a design patent complaint, what it refuses to do, the argument that gets appeals rejected without explanation, and the one argument that gets listings reinstated. It reflects how we handle these matters at Yomtobian Law, and it is written for the seller who has just received the notice and has not yet sent anything to anyone.

What Amazon will and will not do with a design patent complaint

Amazon is not a court. That sentence is the whole problem, and understanding it is the beginning of the solution.

When a rights owner files a design patent complaint through Brand Registry or the Report Infringement form, Amazon does not evaluate whether your product infringes. It removes the listing, records the violation, and tells you to resolve the matter with the rights owner. Amazon’s own moderators say this plainly on the Seller Forums: Amazon “doesn’t have the ability nor authority to decide” whether a product infringes a patent.

That leaves two ways out, and Amazon states them in nearly every notice:

1.        The rights owner retracts the complaint. The retraction must come from the rights owner or its authorized agent, submitted to Amazon directly, and it must reference the complaint ID and the ASIN.

2.        A court decides the question. You present Amazon with a judgment or order establishing noninfringement.

There is a third path that sellers keep asking about, and it does not exist for design patents. Amazon Patent Evaluation Express (APEX), Amazon’s neutral evaluation program, covers utility patents only. If the patent number begins with a D, APEX is not available to you or to the complainant. (If you have received a utility patent complaint instead, our APEX guide covers that process.)

Everything that follows is about making the first path work, and building the record that makes the second path unnecessary.

The first 48 hours: four things to do before you argue anything

Sellers lose these cases in the first two days, before counsel is involved, by doing things that feel productive.

1. Do not delete the listing. Deleting the ASIN does not clear the violation from Account Health. It removes your ability to get the listing reinstated cleanly, and it can read as an admission. Leave it in place. (Some general reinstatement advice tells sellers to close problematic listings. That advice is for catalog cleanup after a trademark or content complaint. It is the wrong move here.)

2. Protect the inventory. Amazon’s policy permits it to dispose of FBA inventory that remains in an IP-flagged state, and the window is measured in weeks, not months. Create a removal order for the affected units now. If Amazon later disposes of the stock, there is no recovering it.

3. Pull the complete record. Save the full text and date of the notice, the complaint ID, every affected ASIN, the patent number, and the name and email of the complainant or its enforcement agent. Rights-owner complaints are often filed by enforcement services that sweep entire catalogs; check whether other ASINs have been hit.

4. Send nothing further to Amazon or the complainant. Not a dispute, not an explanation, not an email to the rights owner asking what they want. Every sentence a seller writes in this window tends to become a problem later. One forum poster described sending Amazon “illustrations that my design is different” and having the case rejected repeatedly. Illustrations are not an analysis, and an unsupported dispute that gets rejected makes the next one harder.

One more fact to know before you decide how hard to fight: if the violation is not successfully disputed, it remains on your Account Health page for 180 days. After that it stops affecting your rating, but the listing stays ineligible. A seller who does nothing waits six months and still does not get the ASIN back.

Why “the patent was filed after my product existed” gets your appeal rejected

This is the most common instinct, and it is the most damaging one.

Sellers regularly discover that the asserted design patent was filed months or years after their product was already on the market. They are often right. And they are often furious, because it looks like a competitor patented their product and then used the patent to remove them.

None of that belongs in your submission to Amazon.

The reason is structural. Whether a product was on sale before a patent’s filing date is a question of validity. Amazon does not adjudicate validity. It does not evaluate prior art, it does not assess whether the Patent Office should have issued the patent, and a submission that leads with any of these arguments is treated as an invalidity challenge and rejected, usually without a stated reason.

The same is true of every argument on this list. If any of them is the centerpiece of what you send Amazon, expect a rejection:

·      The patent is invalid, obvious, or should never have issued

·      Your product predates the patent

·      You hold your own patent on the product (a patent is a right to exclude others; it is not a right to practice your own design free of someone else’s patent)

·      Other sellers sell the same thing and were not reported

·      The complaint is anticompetitive or filed in bad faith

·      How much revenue you are losing

These arguments are not worthless. Several of them are powerful. They belong in a different document, addressed to a different audience: the letter to the rights owner’s counsel, where prior art and bad faith are leverage in negotiating a retraction. The Amazon submission and the settlement letter are two documents with two audiences, and the fastest way to lose both is to put the same argument in each.

The only argument Amazon accepts: noninfringement

Amazon will consider one thing. It will consider whether the product on your listing infringes the design shown in the patent. A submission confined to that question, and supported properly, is what gets listings reinstated.

The legal standard is older than Amazon by more than a century. Under Gorham Co. v. White, 81 U.S. 511 (1871), a design patent is infringed when, in the eye of an ordinary observer giving the attention a purchaser usually gives, the two designs are so similar that the observer would be deceived into purchasing one supposing it to be the other. The Federal Circuit confirmed in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), that this ordinary observer test is the sole test for design patent infringement.

Three principles do the work in almost every case.

The designs are compared as a whole, not element by element. A complainant will often argue that your product shares “the key features” of its patent. That is not an argument that exists in design patent law. Shared features do not establish infringement; the overall visual impression does. This cuts both ways: features your product adds matter as much as features it omits, because both change the overall impression. State this expressly in the submission, because complainants, sellers, and Amazon reviewers all default to checklist thinking.

The ordinary observer knows the prior art. This is the principle most sellers never hear about and the one that wins the most cases. The hypothetical observer is presumed familiar with the earlier designs in the field. In a crowded field, where many similar products already existed when the patent was filed, small differences become significant and the scope of the patent narrows. More on how to use this below.

Functional features are discounted. Design patents protect ornamental appearance. A feature dictated by what the product does, rather than how it looks, is given little or no weight in the comparison. The best evidence is almost always the patentee’s own marketing, which tends to describe features by their function.

How a design patent is actually read

Before comparing anything, you have to know what the patent claims. Most sellers, and most complainants, get this wrong.

A design patent claims what is shown in solid lines in its drawings. Anything shown in broken or dashed lines is unclaimed environment. It is there for context and forms no part of the protected design. A patent whose drawings show a product in solid lines sitting on a base in broken lines claims the product, not the base.

Read the short “DESCRIPTION” paragraph beneath the figures. It sometimes contains statements about surface shading, color, or contrast, and those statements define claim scope.

Then look at every figure, not just the top view. Infringement is assessed on the design as shown in all views. If the patent shows six views and your product differs from three of them, that difference counts. Check the underside, the sides, and the ends before conceding anything.

The method we use is to inventory the claimed design from the drawings as a numbered list, with a count of every distinct element, and then inventory the accused product the same way from a true flat overhead photograph. A perspective marketing shot exaggerates some features and hides others. Measure proportions, counts, and spacing rather than eyeballing them. Measurement has more than once revealed a difference the photograph concealed, and more than once revealed a similarity that would have been embarrassing to discover later.

Nine elements against twenty-five needs no adjectives.

The three-way comparison

When the claimed and accused designs are not plainly dissimilar, Egyptian Goddess directs a three-way comparison: the accused product against the patent, and both against the closest prior art. If the accused product is closer to the prior art than to the patented design, there is no infringement. OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), applied this reasoning to conclude that where the patent’s scope was limited by prior designs, the accused product’s resemblance to those earlier designs defeated the claim.

The safest prior art is already in the patent’s file. Every issued design patent lists the references the Examiner considered. Pull the patent’s file history and the Examiner’s citation form (the PTO-892). Those references cannot be called obscure or immaterial by the complainant; the Patent Office relied on them. If the Examiner rejected the application and the applicant argued around the rejection, whatever the applicant said to distinguish the prior art is an admission about how narrow the patent is.

Check also whether the same inventor or company holds other design patents on variations of the same product. A patentee with three registrations on versions of one motif cannot claim that any of them is broad.

Here is the part that keeps this from becoming the invalidity argument that gets rejected. The submission must say, in terms, why the prior art is being cited. The sentence we use is to this effect: We identify these references not to question validity, which is not at issue here, but because the ordinary observer is charged with knowledge of them, and because the Office’s allowance of the patent over them confirms that the general arrangement is not what the patent claims. Without that framing, the reviewer reads prior art as an attack on the patent and rejects the submission. With it, the same references narrow the patent to what it actually covers.

Be careful with one category of comparison. Pointing to other products currently sold on Amazon that resemble the patent looks like a selective enforcement complaint, and Amazon does not entertain those. If third-party products are relevant as design context, keep them to a single short paragraph, and put the fuller version in the letter to the rights owner instead.

What a noninfringement submission looks like

The reviewer decides in roughly ten seconds, from the picture. Build the exhibit first and write the letter around it.

The exhibit is four panels at matched scale and orientation: the claimed design, the accused product, and the two closest references the Examiner cited. A portrait drawing next to a landscape photograph defeats the comparison, so rotate as needed. Label each panel, and add one line noting that the two prior art panels appear on the face of the asserted patent. Follow the exhibit with a table of quantified differences: element counts, counts by region, proportions, whether elements meet the edges, and whole categories of element present in one design and absent from the other.

The letter itself runs three to five pages. Longer is worse. It identifies the seller, the ASIN, the complaint ID, and the patent. It states in one paragraph that it is confined to noninfringement and does not challenge validity. It inventories the claimed design and the accused product. It presents the exhibit and the table. It states the standard, applies it including the three-way comparison and the functionality point, and asks for three things: withdrawal of the complaint, reinstatement of the ASIN, and removal of the violation from Account Health.

Attach a declaration from the seller under 28 U.S.C. § 1746 confirming the facts: the seller’s identity and merchant token, the first listing date, a factual description of the product, that the listing has not been deleted, and that records are preserved. It should say the design was independently created only if that is true.

The register is calm. No adjectives doing the work of argument, no indignation, no rhetorical questions. The letter should read as though the conclusion were obvious.

The retraction track: run it at the same time

Everything above is addressed to Amazon. It should never be the only thing you do.

A retraction from the rights owner does not depend on any Amazon reviewer agreeing with anything. It is the fastest route to reinstatement, and it is available from the first day. The settlement letter goes to the rights owner’s counsel in parallel with the Amazon submission, and it is the document where the arguments Amazon will not hear become leverage: the prior art that undermines validity, the timing of the patent relative to your product, the exposure the complainant faces if the complaint was filed without a reasonable basis.

Three mechanics matter.

The retraction has to come from the rights owner, to Amazon, directly. A rights owner who tells you by email that they withdraw the complaint has not withdrawn it. They or their authorized agent must submit the retraction to Amazon referencing the complaint ID and ASIN. Confirm that this has happened; do not take their word for it.

A received retraction can still leave the violation standing. Sellers report on the forums that Amazon has acknowledged a retraction and then refused to remove the violation from Account Health. That usually means the retraction was incomplete, referenced the wrong identifier, or came from someone Amazon could not verify as the rights owner. It is fixable, but it has to be chased.

Silence is common. Rights owners, and especially the enforcement services many of them use, frequently ignore sellers. A rights owner is not obligated to respond to a retraction request. They are considerably more responsive to a letter from counsel that describes their exposure with specificity. If they remain silent, the noninfringement submission to Amazon has to carry the case on its own, and the record you have built supports the next step.

If neither track works

The remaining path is the one Amazon names in every notice: a court decision. A seller facing a complaint it believes is unfounded can file a declaratory judgment action seeking a ruling of noninfringement, and in the right facts, additional claims against a complainant who used Amazon’s system to remove a competitor without a good-faith basis.

Most design patent complaints do not get this far, because a properly built noninfringement submission and a properly aimed settlement letter resolve the majority of them. But the possibility is what gives the settlement letter its weight, and building the record from day one is what makes the possibility real.

Frequently asked questions

Can I use APEX for a design patent complaint? No. APEX is available for utility patents only. A patent number beginning with D is a design patent and is outside the program.

Should I delete the listing? No. Deletion does not clear the violation, forfeits the clean reinstatement path, and can read as an admission.

How long does the violation stay on Account Health? 180 days if it is not successfully disputed. The listing remains ineligible after that.

Can Amazon tell me who filed the complaint? The notice normally identifies the complainant or its agent and provides a contact email. If it does not, that is one of the first things to resolve, because the retraction has to come from that party.

The rights owner will not answer me. Now what? Rights owners are not required to respond to sellers. They respond to counsel far more reliably. In the meantime the noninfringement submission proceeds to Amazon independently.

My product was on sale before the patent was filed. Doesn’t that end it? It may, in court. It does nothing in a submission to Amazon, and leading with it gets the submission rejected. It belongs in the letter to the rights owner.

Getting help

A design patent complaint is a narrow legal question dressed up as a platform dispute. The sellers who get their listings back are the ones who answer the narrow question precisely, send the right argument to the right audience, and do it before the inventory disposal clock and the 180-day window run out.

If your listing has been removed on a design patent complaint, our Amazon seller defense practice handles these matters from the first notice through retraction, and we have litigated against companies selling on Amazon in federal court when the platform process was not enough. The emergency line is (516) 234-0789.