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Monday, 12 April 2010

Amazon patent up the creek in Europe

From the IPKat's friend Kristof Neefs (Altius) comes this link to Decision T 1616/08, in which the European Patent Office's Technical Board of Appeal ruled that the subject matter of Amazon’s controversial One-click patent is obvious. In the decision of 11 November 2009, the application to patent a "Method and system for placing a purchase order via a communications network" was opposed by the Gesellschaft für Informatik e.V., Fleurop-Interflora European Business Company AG and the Förderverein für eine Freie Informationelle Infrastruktur e.V.(FFII e.V.). The interesting bit goes like this:

"4.1 The opposition division argued that the invention was obvious for a technically skilled person desiring to implement on a notoriously known computer system the claimed solution to the administrative problem of "how to be sure that the person entering the postal address in the database knows the correct address" ...

4.2 The Board agrees that the subject-matter of claim 1 is obvious. 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 (cf point 1 above). 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. 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.

4.3 The Board does not deny that, as the appellant has pointed out, the claimed system is new (over the notorious prior art) and involves technical considerations. This is however not enough. Novelty is not denied and technical considerations do not
necessarily have inventive quality. The only relevant criterion for inventive step is the one stated in Article 56 EPC 1973, namely whether the invention is obvious to a person skilled in the art. Since in accordance with established jurisprudence this "art" cannot be a field of business or administration, only elements of the solution falling within the competence of a technically skilled person (here: a programmer or
computer scientist) can be taken into account.

4.4 The appellant has furthermore argued that if inventions are denied patent protection only because they involve software, also devices such as anti-lock braking
systems would be unpatentable. The Board does not see this risk since the Boards of Appeal have from early on acknowledged the patentability of inventions which include software contributing to a technical effect (see eg T 208/84 "Computer-related invention/VICOM", OJ EPO 1987,14). Computer-implemented business methods, on the other hand, normally involve no such contribution (beyond the implementation itself).
4.5 It follows that the subject-matter of claim 1 does not involve an inventive step".
In contrast, notes the IPKat, in the US, "Amazon's 1-Click patent still standing after all these years" (see Lexology here).

More on one-click here.
Clunk click here and here
Clickety-click here

4 comments:

Anonymous said...

My reading of the EP decision is that the EP patent is also alive, having been remitted to the opposition division for further consideration.

Anonymous said...

The opposition division rejected the main request as well as the 1st to 3rd aux requests for containing subject-matter extending beyond the application as filed. Under point 3 the board found that this was not so, although it is not completely clear from the decision whether the same A 123(2) objection was raised against all these requests.
The board then consdiered the inventive step of the main, 1st and 2nd aux requests. With respect to the 3rd request it decided to remit it to the OD for further consideration as it contained features that had possibly not been searched and did not exclusively relate to a bussines method.
The board did not have the possibility of not admitting the 3rd aux request as it had been admitted already by the OD.

Tim Jackson said...

I think this case is not the main "one-click" invention, but a divisional for an invention called "gift ordering".

The main "one-click" case is also proceeding as a separate divisional, EP1134680 (application no. 01113935.9). That has been refused and appealed. One of the issues was whether the filing of a divisional (instead of turning up for the oral proceedings in the parent) was an abuse of procedure, but no decision was made on that.

It seems from Register Plus that the Board of Appeal has just arranged oral proceedings for 13 October 2010. The Board has been augmented to five members (instead of the usual three). Perhaps that was because of the abuse issue? But from a quick glance, they don't seem to be pursuing that issue.

Anonymous said...

According to A. 21(4)(b) EPC a board consists of five members when the OD consisted of four members, as was the case here, or whenever the board considers it necessary.

In the present case a five member board is mandated by the EPC and has nothing to do with abuse or similar issues.

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