Often, when discussing my job in public, I receive a number of pontifications on the various merits, or more usually demerits, of “the patent system”. It is said that “the patent system” is “broken” and that there are far too many “dubious patents”. Oft cited is Amazon’s “1-Click” patent, typically described as a monopoly on anything “1-Click” related.
In reply, I politely ask which “patent system” is being discussed, explaining the system of national territorial rights. The eyes then glaze over as I launch my defence.
Helpfully for me the European Patent Office has recently published Board of Appeal decision T 1244/07. This case relates to a divisional European patent application within the “1-Click” family. It is worth a read, especially for those with negative views of “the patent system”, as it rather nicely shows the European Patent system operating smoothly with not a breakage in sight.
Firstly, the claimed invention does not consist of the words “1-Click”. Instead, all of the following features are required:
“A method for ordering an item using a client system, the method comprising:
receiving from a server system a client identifier of the client system when the client system first interacts with a server system;
persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;
storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;
storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;
connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:
sending from the client system a request for information describing an item to be ordered along with the client identifier;
determining at the server system whether single-action ordering is enabled for that purchaser at the client system;
if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;
displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,
performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and
completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.”
Secondly, even with this long list of features the Board of Appeal found the claim to lack an inventive step over previously published documents. In particular a journal article called “Implementing a Web Shopping Cart” by Baron C. et al was cited.
Thirdly, I enjoyed the thinly-veiled dig at US and Canadian law:
27. It is interesting to observe the outcome of this application in other jurisdictions.
In the US, where there is no specific exclusion for business methods, the validity of the equivalent claims was never decided in court, but a decision by the Court of Appeal of the Federal Circuit (D6) lifted an injunction on the basis that the alleged infringer had “raised substantial questions as to the validity of the patent”. The patent was also re-examined and allowed in essentially the same form albeit limited with additional features of a shopping cart. The office action in the re-examination did not discuss D1, or go into details of cookie technology and the skilled person’s appreciation of it.
In Canada, the examiner had considered equivalent claims to be obvious over D5 and cookie technology. The review (D7) by the Commissioner of Patents found that the use of a cookie to retrieve purchaser-specific information was obvious (point 87), and the single-action ordering aspect not obvious (point 102), but an unallowable business method (point 181) and not technical (point 186). On appeal, the Federal Court overturned the latter findings for having no basis under Canadian law for such exclusions. D1 was not discussed in either of these decisions.