07/03/2013
On 15 January 2013, the European Patent Office revoked Amazon’s patent directed to ‘A Method and System For Placing a Purchase Order Via a Communications Network’, aka the “one-click patent”. This latest decision follows post-grant opposition proceedings which resulted in a preliminary decision to revoke the patent in 2008. Amazon subsequently appealed to the Board of Appeal thereby suspending that decision.
Claim 1 of the opposed patent related to:
A method in a computer system for ordering a gift for delivery from a gift giver to a recipient, the method comprising:
receiving from the gift giver an indication that the gift is to be delivered to the recipient and an electronic mail address of the recipient; and
sending to a gift delivery computer system an indication of the gift and the received electronic mail address, wherein the gift delivery computer system coordinates delivery of the gift by:
sending an electronic mail message addressed to the electronic mail address of the recipient, the electronic mail address requesting that the recipient provide delivery information including a postal address for the gift; and
upon receiving the delivery information, electronically initiating delivery of the gift in accordance with the received delivery information.
Perhaps unsurprisingly, a number of oppositions to the patent were filed in 2003 and 2004, and the resulting revocation by the Opposition Division was on the grounds that the independent clams as granted added matter, since they contained subject matter extending beyond the content of the application as originally filed, and that the independent claims lacked an inventive step. The Auxiliary Requests submitted by Amazon were also considered not allowable by the Opposition Division since they extended the scope of protection beyond that of the granted patent and so added matter. On appeal, Amazon argued as a Main Request that the claims as granted did not add matter, and that the patent should be maintained as granted.
The offending feature which the Opposition Division had previously ruled added matter, and which was therefore unallowable, was the feature of the delivery information including a postal address. The Board of Appeal disagreed with the Opposition Division’s original ruling and considered that this feature did not add matter since the application as originally filed did disclose a determination of “whether the delivery address is a valid U.S. Postal Service address”, and the Board considered that this only makes sense if a postal address is what the vendor (i.e. claimed system) has asked for. Therefore, the Board considered that the postal address feature was implicitly disclosed in the application as filed and so did not add matter.
However, the Board of Appeal went on to rule that Amazon’s Main Request to maintain the independent claims as granted, as well as the First and Second Auxiliary requests lacked an inventive step. The Board also agreed with the Opposition Division’s assessment that the invention was an obvious implementation of non-technical ideas using a “notoriously known computer system”.
Regarding the Main Request, the Board’s logic was that:
The problem underlying the invention is that at the time the order for the delivery is received the exact address of the recipient may not be known. Simply asking the recipient for his address is a non-technical step. Equally non-technical is the idea of having the vendor – rather than the purchaser – contact the recipient. [What is] Technical is therefore only the computer system itself and the means for communicating with the recipient, namely e-mail. But these technical means were well known at the priority date, and the invention simply uses them in a straightforward, conventional manner.
Regarding the first Auxiliary Request, this specified in the independent claims that the gift giver selects an item displayed on a website during a browser session, and that the item is added to a shopping cart and bought as a gift. The Board also considered that this lacked an inventive step since it was acknowledged in the description that web commerce involving a “shopping cart” was known, and therefore its use in the context of computerised gift giving must be regarded as obvious!
Regarding the second Auxiliary Request, this amended the independent claims to include the feature relating to the automatic extraction of delivery information. However the Board noted that:
The mere wish to automate process steps that have previously been performed manually is usually regarded as obvious. The automation details may naturally be inventive, but in the present case the problem of how to extract the delivery information is left entirely to the skilled person. Thus an inventive step is neither involved in the idea to extract information automatically, nor in its implementation. The subject matter of claim 1 is therefore obvious.
In response to this, Amazon combined the non-inventive features of the second Auxiliary Request with the features relating to single-action ordering as a third Auxiliary Request. However, the Board decided that this had not necessarily been searched, and therefore decided to remit the case back to the Opposition Division for further prosecution.
The Opposition Division did not see any kind of technical interaction between these two features of the third Auxiliary Request, and therefore, that these two features were merely aggregated. They concluded that according to established case law, the mere aggregation of features cannot involve an inventive step.
In summary, neither the Board of Appeal’s decision nor the Opposition Division’s latest ruling regarding Amazon’s one-click patent is surprising, and both follow well-established case law. However, they should serve as a warning to patent proprietors to be careful when acknowledging prior art in patent specifications, since such acknowledgments can be used to attack a patent application or a granted patent. The decisions also illustrate how the European Patent Office assesses patentable subject matter: non-technical features in a claim are excluded, but if the claimed invention solves a technical problem in a non-obvious way, then it should be allowable.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
