We recently had a client who received a utility patent complaint on Amazon.
Utility Patents apply to the function of the product, ie. what the product does. Even if your product does not look the same as another patented invention, if it performs the same function, or does the same thing, then it’s considered to be infringing on that patent. (These complaints are very difficult to win).
After our review of the patent and the respective complaint, we found that the complaint was valid. Our client was, in fact, infringing upon the complainant’s rights. We contacted the opposing counsel and were able to successfully enter into a licensing agreement.
A licensing agreement is when a trademark owner (in this case, the complainant) permits someone else (our client) to use their trademark in connection with specific products and services. Licensing agreements are a great way to settle a dispute between the seller and the brand / rights owner.
Among other things, the agreement should include quality control stipulations that set forth clear standards as to the nature and quality of the licensed products or services. Other concessions that the seller might offer the trademark owner are brand policing, purchasing directly from the brand owner’s distribution network, or agreeing to maintain MAP pricing.
The key is to maintain the seller’s profitability without making too many sacrifices. If the agreement is successful, both parties win. In this case, the licensing agreement was the way to go; the complaint was retracted, and both the rights owner and our client were happy.