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“As sales of industrial products and replacement parts transition to the 'wild, wild west' of online marketplaces, so too do infringements of Original Equipment Manufacturers’ (OEMs) intellectual property,” say Richard Mckenna and Andrew Salomone, attorneys with Foley and Lardner.

As 2024 gets underway, manufacturers can add one more worry to their business-to-business digital commerce watchlist. They need to protect their product and intellectual property on B2B marketplaces.

“As sales of industrial products and replacement parts transition to the ‘wild, wild west’ of online marketplaces, so too do infringements of Original Equipment Manufacturers’ (OEMs) intellectual property,” say Richard McKenna and Andrew Salomone, attorneys with Foley and Lardner LLP. “The barriers to entry for an industrial part retailer to create an online page selling will-fit replacement parts are very low, so these listings are growing as both industrial retailers and consumers discover these online markets.”

Competition in search results for B2B marketplaces

In a recent blog post, the pair of intellectual property lawyers note that manufacturers need to take proactive steps. Doing so can help to protect their products and services online.

“As the number of industrial retailers on these online platforms increases, the retailers need to be more creative and push the limits even further to drive search engine traffic to their ecommerce pages,” McKenna and Salomore write. “Unfortunately for OEMs, the creativity of these retailers often results in misuse or infringements of OEMs’ valuable IP rights.”

“For example, a search on Amazon for BOBCAT in conjunction with the part number ‘6737325’ generates dozens of hits for the will-fit versions of the bucket teeth, all of which are competing with the genuine BOBCAT branded bucket teeth,” say McKenna and Salomore. “IP protections for both OEM brands and the wear parts themselves — coupled with effective and diligent enforcement of these IP protections — will take on increased importance for OEMs as they try to fend off the tsunami of will-fit copies that is likely coming (or has already arrived),” they write.


Which tools to use

There are tools and features on major and established B2B marketplaces. They include Amazon Business, which manufacturers can use to ensure intellectual property protection.

On Amazon Business, Amazon Patent Evaluation Express (APEX) is Amazon’s new program for IP owners. It can assist with enforcing design and utility patents, according to the blog.

But a prerequisite for participation in APEX is for the patent owner to first join Amazon’s “Brand Registry” system. It requires enrolling at least one U.S. trademark in the Brand Registry. These in-house systems were initially developed in response to objections by consumer product trademark owners, say McKenna and Salomore.

“Once enrolled, the IP owner starts the takedown process by submitting a simple, short, online form identifying the patent infringed and the unique ‘ASIN’ code associated with the allegedly infringing product(s). If the formal APEX process is taken to completion, then there will be brief submissions by both the IP owner and the alleged infringer summarizing the infringement claim,” according to the blog.


“These submissions are reviewed by an independent patent attorney approved by Amazon to act as a neutral evaluator. If this neutral evaluator confirms infringement, then the $4,000 fee for the evaluation is paid entirely by the infringer and the posting is taken down,” write McKenna and Salomore. “However, if the neutral evaluator finds no infringement, then the IP Owner must pay the $4,000 evaluation fee. One key benefit for an IP owner using the APEX system is that challenges to the validity of the patent are extremely limited, unlike conventional litigation in court.”

Staying ahead of the curve

The key for manufacturers to protect their intellectual property on B2B marketplaces is to be proactive.

“OEMs can achieve success in shutting down the sales of infringing products using these platforms with only a moderate investment,” write McKenna and Salomore. “However, OEMs need to be flexible, and patient given the limited available information surrounding the black box operation of these platforms. Overall, several of our clients have achieved meaningful results for limited expense by taking full advantage of these in-house IP enforcement systems.”

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