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Sunday, 9 December 2007

EPO Santa snatches Amazon's gifts


The EPO have recently announced the result of an Opposition Division hearing regarding Amazon.com's patent EP0927945 relating to gift ordering. The EPO says:

The so-called "Gift Order Patent" has been revoked by the EPO in an opposition proceeding today [7 December 2007] after a hearing involving three opposing parties and the patent proprietor, Amazon Inc. The patent relates to a method for purchasing goods over the Internet to be sent as gifts.

The contested patent is European Patent EP 0 927 945, granted to Amazon Inc. on 23 April 2003. This patent relates to an invention in the field of computer-implemented inventions (CII). It specifies a method by which a person can purchase a product as a gift and have it shipped based on the e-mail address of the recipient. Based on this e-mail address, the system will then contact the recipient to obtain a valid postal address for shipping. This patent is not to be confused with the “One-Click” patent application, which was withdrawn after the first EPO examination and never granted in Europe.

The parties who have lodged opposition against the patent – all of whom were represented at the hearing – are Fleurop Interflora Businesses and two non-government organisations in the IT field, namely the German Society of Information Sciences, and the Foundation for Free Information Infrastructure (FFII).

One of the opposition’s main arguments against the patent – among others – was that it fell short of meeting the criteria of providing an “inventive step”, as defined in Article 56 of the European Patent Convention (EPC). On these grounds, the three opposing parties asked for the patent to be revoked.

As usual, the EPO has confused the issue for many by muddling patentability with inventive step. The IPKat guesses that the real reason behind the patent being revoked will have been that the 'contribution' (to use the English approach) solely related to excluded matter, which from looking at the claims seems to be that of a method for doing business (and not a computer program at all).

This Kat gets quite annoyed at the way the EPO at all levels persists with this (to his mind at least) rather dishonest approach. What is wrong with saying that the advance over the prior art represented by an application (though it may be novel and inventive) is nevertheless purely within an area that is excluded from patentability? Even though the 'right' result may be achieved in most cases, the approach does result in some quite strained reasoning that tends to stray far from the clear wording of the Convention, and certainly doesn't help with letting a wider audience know where the line between patentability and exclusion lies.

What the EPO has also failed to say is that this may well not be the end of the story. Amazon now have about 2 months to decide whether they want to appeal the decision. If they do, the final decision may not be known for another few years. Should things really have to take this long?

25 comments:

Anonymous said...

The point is that under the EPC an advance over the prior art cannot be inventive if it is in an area that is excluded from patentability. It makes no "EPC sense" to say that non-technical features can still be inventive.

Of course, a particular combination of non-technical features can be immensely creative. However, this creativity in the normal meaning of the word basically has nothing to do with inventiveness in the EPC meaning of the word. Under the EPC's case law, inventiveness is inextricably linked to technicality.

As I understand the Aerotel/Macrossan decision, once a claim has passed the 4-step test for patentability, the assessment of inventive step basically is an assessment of the "creativity" of the combination of all features making up the contribution, whether technical or not.

Actually, Aerotel/Macrossan might not say this as it is only concerned with Art. 52(2)(3). But surely this is the UK practice for inventive step, or one could not say that a claim is inventive BUT excluded.

David said...

There we go again with those words: "technical" and "technicality". Saying that "inventiveness is inextricably linked to technicality" is an argument that has no basis in reality, let alone the wording of the EPC. It is perfectly reasonable to accept that a claimed invention is novel and inventive, thereby find the actual contribution made over the prior art. One can then assess whether this contribution is not to be regarded as being "an invention" under Article 52(2) & (3). The Aerotel/Macrossan test (the first 3 steps anyway) tries to do this (although I am not saying it is in any way perfect). The EPO approach gets everything in a muddle with the use of the word "technical", which is essentially meaningless and can therefore be used to mean whatever the EPO wants it to mean. I think Humpty Dumpty has been quoted in this context before.

Tim Jackson said...

"This patent is not to be confused with the 'One-Click' patent application, which was withdrawn after the first EPO examination and never granted in Europe." [from the EPO statement]

While this is true, the EPO is asking for trouble from the anti-software patent lobby for not telling the whole story.

Amazon got into a mess in the EPO with their original 'One-Click' application EP0902381. Before withdrawing it, they filed a divisional, EP1134680, which attempted to claim the 'One-Click' invention in a more European style.

That divisional was refused at oral proceedings last year, for lack of novelty and inventive step. It is currently under appeal.

The present 'gift ordering' patent EP0927945 is another divisional from the same parent EP0902381.

Anonymous said...

I think that even Steinbrener would agree that the EPO's interpretation of inventive step in relation to technicality rests more on a legal fiction than on reality. Certainly the plain meaning of the word "obvious" in Article 56 makes no distinction between technical and non-technical features. However, the EPC has to be interpreted in the light of the EPO's case law. At least, when it is an opposition division that applies it.

The interpretation by the EPO is clearly not based on the plain meaning of the word "obvious". It is however quite normal for courts in continental Europe to depart from a literal reading of statutes and opt for a more systematic interpretation.

I believe the basis for the present interpretation is:
1. what is an "invention" within the meaning of Art. 52(2) and (3) is independent of the state of the art;
2. it cannot be the idea of the EPC that adding a "non obvious" (dictionary meaning) decoration to an otherwise obvious apparatus would render the apparatus inventive.

Aerotel/Macrossan does take into account prior art for Art. 52(2) and (3). However, there is no basis in the EPC for that. Furthermore, why would something stop being an invention just because it's not novel? (Of course an invention that is not novel is not entitled to a patent.)

A more serious problem with Aerotel/Macrossan that I see is the following. Suppose an apparatus is claimed that is distinguished from the prior art in a single trivial technical feature (or a trivial feature in a non-excluded area, if you wish) and a creative decoration. The one technical feature can, as I understand it, suffice to let the apparatus pass the Aerotel/Macrossan test without (by itself) necessarily rendering the apparatus inventive. But under UK law the claimed apparatus will be inventive thanks to the creative decoration (and not excluded from patentability thanks to the trivial technical/non-excluded feature).

Please correct me if I am misunderstanding the UK approach.

If I am correct, is that really an apparatus that you consider should be granted a patent?


Your complaint about the lack of a definition of technicality is a valid one. However, in my opinion this is a separate issue. I believe that Aerotel/Macrossan could be adapted to use an undefined notion of technicality, and similarly the EPO approach could be applied while focussing more on the particular excluded categories rather than on (non)technicality.

My guess is that the Boards leave technicality undefined for the moment so as to have some space for manoeuvre. Also it *is* hard to give a general definition. It is defined step by step (or effect by effect), e.g. T 0619/02 decided that human perception phenomena are not technical. Is it so clear how Aerotel/Macrossan would deal with such effects?

David said...

Yes, you are misunderstanding the UK approach, and possibly also the generally accepted concepts of novelty and inventive step. Adding arbitrary and non-excluded features is generally regarded as not being inventive, unless the features work together in a non-obvious way. This has nothing to do with the Aerotel/Macrossan test, nor any idea of 'technicality' (whatever that means). However, if a feature is not an obvious addition, the contribution may need to be assessed to determine whether it is excluded. For a good example, I recommend reading the recent decision of Ingenico v Pendawell, in which the claimed invention was seen to be novel and not obvious, but the contribution was then determined to fail the Aerotel/Macrossan test. This, to my mind, is a much more honest way of assessing claimed inventions and avoids the need for undefined terms. If a claimed invention fails the novelty or obviousness tests, there is no need to consider excluded matter. If it is still not obvious after that, the Aerotel/Macrossan test is used to determine whether the contribution is excluded. Is that so hard to understand?

Anonymous said...

David - no need to be so ratty, or even catty!

David said...

You should have seen my first draft. I thought I was being quite restrained.

Dr Schoen said...

I don't think there is anything muddled about the EPO's thinking here; its approach is consistent with the cornserstone of EPO jurisprudence in this area, Auction method/HITACH (despite what was said in Clipboard formats/MICROSOFT).

I think it benefits all of us with an seemingly insatiable appetite for debating this particular area to take a step back occasionally and ask why Art. 52 (insofar as it covers computer programs) was included in the EPC in the first place. In fact it was to protect patent examiners from being deluged by prior art. Once you fasten onto that point, the approach in HITACHI of not getting bogged down in a separate analysis under Art. 52 but instead to make the assessment under Art 56 in relation to excluded matter only, makes sense. Indeed, it was the basis of the draft directive, which was only derailed by people who did not know a lot about patent law.

Anonymous said...

Wow, that's a strong attack on the EPO approach while failing to recognise the completely equivalent failings of the UK approach - calling it "not perfect" hardly does it justice.

The EPC defines novelty and inventive step as being relative to prior art. The exclusions and industrial applicability are not defined in a relative way.

Therefore, the contribution approach, the basis for the A/M test has no basis in reality or the EPC.

One huge problem with it, pointed out by the latter anon, is that taking it to its logical conclusion you end up with something not being an invention because it is not novel. No novelty, no contribution, ergo no invention. That might seem fine under an everyday meaning of "invention" but it is not fine from the (also undefined, I might add) meaning of invention under patent law.

Contribution itself is yet another undefined term. It is some halfway house between novelty and inventive step, neither one nor the other. Fujitsu called it "newness". CFPH got the wrong end of the stick and assumed Fujitsu was talking about novelty, but said you needed to consider inventive step as well. That is essentially Falconer reasoning, which has been expressly rejected by the C of A, although they now appear to be having second thoughts

A/M, in having those second thoughts, muddied the waters by offering a number of vague suggestions for working out the contribution. Some of which the UKIPO pay attention to, some of which they don't. They seem to ignore contributions comprising the advantages of running a computer program, for example, despite advantages being expressly listed as a part of the contribution in A/M.

While A/M said some very sensible things, the decision itself says that the judges didn't agree with the precedents they were bound by. How can a sensible final decision arise from such a situation?

Ultimately, neither the A/M test nor the technical invention test have any basis in the EPC. But then again, neither does the Windsurfer test really. That is not a reason to reject or criticise them. The end goal is that, in using the test, decisions consistent with the intention of the EPC should arise. The problem is, the intentions in the EPC are not clear when it comes to the exclusions so people fall on one side or the other depending upon what they think the law OUGHT to be, not what the law actually is.

The A/M test, to me, seems harder to apply and not even the judges who delivered it were entirely happy with. Not a great amount of support for it, then.

Anyway, looking at this Amazon case, I don't see how either the A/M test or the technical inventive step test were necessary. If you don't have a mailing address, but do have an email address, the invention was to email the person asking for their mailing address. I'll say no more...

Gerontius

Anonymous said...

I'm the Anon of the 1st and 4th post. As I stated, I may misunderstand A/M and UK law in general. However I'd like to know where my example really fails.

First, I'm not talking about "adding arbitrary and non-excluded features" as David seems to think. I'm talking about adding a creative decoration to an apparatus. If I take the dictionary meaning of "obvious", a decoration can surely be non-obvious.

My claim is A+B+C.
A is an apparatus known from D1.
B is a non-excluded feature.
C is a "non-obvious" decoration of the apparatus.

I assume that A+B is not excluded from patentability (under A/M), but obvious in the light of a combination of D1 and D2. Such examples of A and B must certainly exist. Right?

Now A+B+C is novel. Right?
Also, A+B+C is inventive, as C is not obvious. Right?
Furthermore, I don't see how A+B+C can be excluded from patentability under A/M, since already A+B is not-excluded.

I do not claim that the above is correct, but I can't find the flaw in my line of reasoning.

A somewhat "sensible" solution is to say that A+B+C is only inventive "because of C", but the contribution defined by C is excluded. However, I picked B such that the contribution defined by B is not-excluded. So what you would get is "A+B+C" is excluded relative to C, and non-excluded relative to B. That can't be right.

So where's the flaw?

Anonymous said...

Following up on my last submission, I think there is one way out: you can't have A and B such that A+B is not excluded, but not inventive.

In other words, once certain subject-matter is not inventive, it stops being an invention. If this is the correct interpretation, then a "contribution" is not halfway house between novelty and inventive step as another anon suggested. Instead, contribution *is* inventive step.

If this is still correct, then a fair conclusion is that under UK law, non-excludedness is inextricably linked to inventiveness. Whether this has a basis in reality or in the EPC I leave up to the reader.

David said...

Your answer lies in the Guidelines for Examination, C-IV 9.5. No need to worry about excluded subject matter. The same reasoning also applies in the UK.

Anonymous said...

Of course, if the surface decoration has a technical effect such as a new and inventive camouflage pattern, patentability could be argued. The devil is in the detail, as they say (which of course is also somewhat apt for CIIs).

Anonymous said...

Guidelines C-IV, 9.5 (soon to be 11.5) only tells me that A+B+C is inventive if and only if either A+B or A+C is inventive, as there is no interplay between B and C.

However, if I take C as non-obvious (but excluded), then C is inventive and A+C is inventive. Therefore A+B+C is inventive.

Or are you saying that A+C is not inventive because C is excluded? That is the EPO approach, not the UK approach.

EPO approach: in A+B+C, C is excluded and must (largely) be ignored. A is an invention, but not novel. A+B is an invention, but lacks inventive step. Therefore A+B+C is an invention, but lacks inventive step as well.

UK approach: in A+B+C, A+B is obvious and C (being non-obvious) is the contribution. C is excluded, therefore A+B+C is not an invention (A/M).

In this way the UK approach seems logically consistent (isn't that the least we may expect?), but it forces one to accept that subject-matter stops being an invention once it is shown to be obvious. A/M can only be applied after inventive step reasoning.

Anonymous said...

To actually give the anon an answer, the A+B+C example should probably fail because B, as a trivial technical feature, is not part of the contribution. This is not the same as saying that B is not inventive (although it presumably wouldn't be inventive either), it is just not what the inventor has contributed to society. The inventor has only contributed C, but C is excluded.

Now, this is the way it probably should be, but it is more difficult than it appears at first glance because of the Aerotel part of the A/M decision. There it was said that a new combination of known bits of apparatus was enough to avoid the business method exclusion. The UKIPO have said that this get out clause doesn't apply if there is a computer program and/or computer hardware involved, but would they say the same of other exclusions such as your decorative feature? I haven't seen it tested yet.

Nevertheless, this part of the judgment could raise the possibility of your A+B+C being patentable if B is a bit of known kit which helps in performing a business method C. eg an instruction board (A) having Velcro(TM) attachable bits (B) to direct people to clean an office (C).

I get the feeling that the UKIPO might also go easy when examining new board games, where there is a new combination of board and pieces (A+B) but only the rules (C) are new and inventive. Anyone done a game patent recently?

Essentially, if you have a computer program you're in serious trouble, but do business or play a game without a computer but with a new combination of equipment and you're in with a good chance. Whether aesthetic features will also be given such lax treatment, too, I don't know.

Gerontius

David said...

Here is a recent application refused under the exclusion of rules for games. Even with new equipment and associated rules it stood no chance.

Anonymous said...

I don't see how that decision is particularly relevant to my theory - there's no new apparatus. To the extent that there is an apparatus, it is a scratchcard with apparently no new physical features just a set of rules. Perhaps less functional claims would have worked better, but it's difficult to tell without closer study. There's also a potential computer implementation so, as mentioned, the UKIPO would be disinclined to allow the new combination of apparatus get out clause.

The decision potentially supports my theory by saying that "in theory, apparatus for playing a game is patentable – for example the bendy bat of IGT or a rugby ball." But there's not enough to tell.

Note also that that decision asks about inventive step after asking about the exclusions, showing that the inventive feature can't be the contribution.

Gerontius

Anonymous said...

On the last point of David's original posting, the decision whether to appeal or not is a bit of a no-brainer with the new EPC. Under Rule 103, the appeal fee is refunded if the appeal is withdrawn before the grounds are filed and within the four month period.

David said...

I doubt whether Amazon will be put off by the 1065 euro appeal fee, given how much they must have spent on this so far.

Anonymous said...

So it seems the (A/M) test for excluded matter can be applied in a flexible manner. In my A+B+C example it has to be applied *after* inventive step, so that the contribution is just C, hence excluded. In other cases it is OK to apply the test on a contribution determined after the novelty test.

Of course in the latter case (i.e. applying the test already after the novelty test), if the test results in "not excluded" you still *must* redo the test after the inventive step test.

Example: same A,B,C. A+B+C is novel over D1. Contribution is B+C. Since already B is in a non-excluded area, applying A/M will tell you that the thing is not excluded. Since C is non-obvious, A+B+C is also inventive. Oops, now you must correct this outcome by again applying A/M, this time on the contribution after the inventive step test. Since A+B was not inventive (in the light of D1 and D2), the contribution is C. Since C is excluded, we don't have an invention. We have now arrived at the correct outcome, but what a hassle...

David said...

I don't understand why the last commenter is trying so hard to discredit the Aerotel/Macrossan test, without any apparent success so far. Perhaps he (I doubt very much if I have judged the gender wrong) is in some way associated with the EPO? In any case, the increasingly nonsensical A+B+C hypotheses are starting to bore me. Just to address the last comment, it strikes me that if the test is applied after assessing novelty and inventive step (as I suggested earlier), the 'correct' outcome is arrived at anyway. Is he suggesting that the 'technical' problem/solution approach is in some way easier to understand or apply? I have seen a few decisions at the EPO that have resulted in a 'whoops, we should have looked at novelty and inventive step first' result, when the party line of T 641/00 has been followed too closely. Look at this month's OJ for one example. The EPO approach is often far too much of a cop-out because aspects of the invention are taken out of the assessment without any real understanding of how they contribute. Examiners too often use the approach as an excuse to reject applications without properly assessing them for novelty and inventive step first.

Anonymous said...

David, you really have got it wrong. Contribution is NOT novelty and inventive step. The decisions of hearing officers do not treat it that way (see Card swipe decision), examination reports of examiners do not treat it that way ("Your invention is excluded so I have not considered novelty and inventive step") and the Court of Appeal has expressly rejected that way (Genentech, with A/M grudgingly confirming it was law). The exclusions are considered before novelty and inventive step and have been for the last decade except for that brief period following CFPH.

It seems to me that A/M doesn't need actively discrediting when there are so many people simply doing a bad job of trying to understand it.

And your last sentance about EPO examiners has been exactly what I've been saying about UK examiners for the last 5 years.

Gerontius

David said...

Calm down, G; I didn't actually say that. My own reference to the card swipe decision should have made that clear. It looks like otherwise we are largely in agreement.

Anonymous said...

David, before you decide who has to calm down, maybe re-read this thread in a month or two. And I don't think my gender (or skin color for that matter) is of much importance.

David said...

You are right, of course. However, the English language is unfortunately afflicted by the need to use gender-specific personal pronouns. Obviously I guessed right, but this has no bearing on the validity or otherwise of your arguments. What may have a bearing is who you actually are, but since you do not have the courage to tell us I will have to live with the mystery of it.

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