There are few things more gut-wrenching than spending months or years inventing a new product and turning it into a successful business, only to see a direct knockoff on Amazon for half of the price. I went through that experience with BottleKeeper. My Co-founder and cousin, Matt Campbell, invented the BottleKeeper and made the first prototype in late 2012. We proved the concept with crowdfunding in 2013 and shipped our first orders in January 2014. By the fourth quarter of 2015, knock-off products began to appear on Amazon, and they exploded in numbers through 2016.
Although it took both significant time and money, we have been successful in beating the copycats and protecting our brand. These are the steps we took to successfully enforce patent infringement on Amazon.
- First, you’re going to need a patent
I’ll preface this and the subsequent points with the fact that I’m not an attorney, I don’t pretend to be one, and I’ve never played one on TV. I’m speaking from the position of personal experience, but I always refer legal matters to our legal team-;and you should do the same.
The general purpose of a patent is to protect your idea, but they can be quite expensive. If you are just starting out and unsure if your product is going to be successful, a provisional patent may save you on some upfront legal expenses while giving you 12 months to prove out the concept and see if your business is viable. You must convert a provisional patent to a non-provisional patent, such as a utility patent, within 12 months of filing it in order to secure the original filing date. This date is very important if you need to enforce your patent.
- Patent enforcement
Once you have a patent, there is good news and there is bad news. The good news is that you can now defend your idea, the bad news is now you must defend your idea otherwise your patent doesn’t mean anything.
Once our first utility patent was published in late November 2016, we started an aggressive defense strategy where we filed lawsuits against eight or so small companies that were selling patent-infringing products on Amazon. The game plan was to file suit against the smaller companies because they wouldn’t have sold enough product to be able to afford to defend it, forcing them to settle quickly and without a fight. Then, as part of that settlement, we aimed to get consent judgements from the court. A consent judgement is effectively a court order which indicates that the defendant, as well as the court, has agreed that a patent violation has taken place.
These consent judgements are valuable for a number of reasons. They are legal wins for your patent because they reinforce its validity. They also create a public record that shows potential or current infringers that you will aggressively defend your patents and have historically done so successfully. The resulting court orders play an extremely important role in patent infringement defense on Amazon.
- Next stop, Brand Registry
There are many ongoing challenges in dealing with Amazon, which I’ll detail another time, but Brand Registry is one of the more useful tools that the platform has created to help protect your brand. You first need to register your brand there, which will allow you to load your intellectual property into the system so that you can report on infringers.
Historically, Amazon would only enforce on trademark and copyright infringements, which are much more black-and-white from an infringement standpoint. Things changed in late 2018 when Amazon added the patent infringement portal to Brand Registry.
With that change, court orders became important. We’ve been successful with enforcing patent infringement on Amazon because we have court orders that resulted from the previously settled lawsuits and consent judgements. We have deduced that having these court orders removes the decision-making otherwise required by Amazon to legally make a judgement call on the validity of the patent. With the court orders, the courts have already made that determination, so Amazon can just point to them.
As you can see, this has been a long process for us. It also continues to be a game of Whack-a-Mole that we still play today. However, these steps have allowed us to enter a new inflection point where many would-be copycat brands no longer pursue copies or derivative products, and we have seen a significant reduction in offenders. That has allowed us to refocus our efforts and capital on innovation and brand growth.