Amazon’s “One Click”: Still Not Inventive [T 1244/07]

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.

Filing EPO Appeals: Take Care [T1764/08]

Some tips from the case law on general internal procedures. T 1764/08 deals with a case in where the grounds of appeal were filed electronically. The only problem was this was on 13 August 2008 and electronic filing of appeal documents was only permitted from 5 March 2009. So far, so “oops”.

What is interesting is the refusal of the request for re-establishment under Article 122(1) EPC. According to Article 122(1) EPC an appellant can only have his rights re-established if he was unable to observe the time limit for filing the statement of grounds of appeal in spite of all due care required by the circumstances having been taken. In this case it appears the internal procedures didn’t convince the Board:

17. Taking into account the submissions and evidence on file, the board has difficulty in acknowledging that, at the relevant time in question, the representative’s firm had an established system of checks to ensure that mistakes such as happened in the present case were avoided. It appears to the board that, although the assistants were generally instructed to use fax or regular mail for filing documents in appeal proceedings, there was no check or monitoring foreseen in the organisation of the firm as to whether these instructions were followed. It is clear from the representative’s submissions that the assistant relied merely on the representative’s instructions and, if the assistant did not receive any instruction, she “did what she was used to do, viz. send the letter to the EPO through epoline” (see the appellant’s letter dated 6 March 2009, page 2). This, however, speaks against a normally satisfactory system for monitoring the filing of appeals.

18. It is also the board’s view that filing an admissible appeal is not a routine task, but rather a complicated task which needs clear instructions from the professional representative to his assistant. In the present case, however, there is no evidence on file whether the assistant received instructions from the appellant’s representative for sending the statement of grounds of appeal to the EPO, and if so, what instructions. In particular a copy of the email allegedly sent together with the draft statement could not be provided to the board.

19. The board also considers that the assistant’s work should have been monitored as far as filing documents in appeal proceedings was concerned since at the relevant time the legal situation differed from that for filing documents in other proceedings before the EPO and the legal consequences for any failure were severe. In the board’s view the professional representative whose electronic signature was on the cover sheet should have checked whether the attached document could have validly been sent via epoline and should have instructed the assistant accordingly, in particular in view of the exceptional personal circumstances of the appellant’s representative, which were known within his office.

I guess the moral of this story is that it is essential to have documented internal procedures with suitable checks and balances (that are followed) to allow the emergency safety net of re-establishment to be of any use. Attorneys also cannot get away with blaming their assistants.

Non-Attendance at Oral Proceedings: Be Courteous [T1930/07]

A little case law snippet (from T1930/07) to remind parties that are not turning up at Oral Proceedings to inform the EPO beforehand. Manners maketh the man (or woman):

3. The board notes that a professional representative has a duty to inform the European Patent Office as soon as possible of a party’s intention not to be represented at oral proceedings (cf. e.g. T 653/91, reasons 8, and T 1485/06, reasons 2.8; both not published).

Article 6 of the code of conduct of members of the European Patent Institute (epi), of which the representa tive is obligatorily a member, stipulates that the mem bers are required to act courteously in their dealings with the European Patent Office. The epi Council also issued the explicit recommendation that “if a party to an appeal decides that it will not attend a scheduled oral proceedings, the representative of the party should, as soon as possible … before the oral proceedings … inform the board of the party’s non-attendance” (epi Informa tion 4/2009, pp. 133-134).

The board considers it discourteous of the representative in the present case not even to have informed the board in time for the start of the oral proceedings that he would not attend.

Case Law Review – T 1466/06

Case:

T_1466/06

Claimed Subject Matter:

Method of supporting sales and maintenance of steam traps and an aggregating system for use in that method.

Comments:

Sampling and interpolation were deemed to be standard techniques.

A comparison was performed on selected data, but the comparison was used to inform a business decision. Thus there was deemed to be no technical effect.

EQE Results Out Today! [2011 Edition]

The EQE results appear to have been released to a hoard of anxious EQE students:

http://www.epo.org/learning-events/eqe/statistics.html

As with last year the results are presented in a long PDF document (presumably to irritate those trying to access their results using a smartphone). Get your candidate number and CTRL-F ready and good luck!

….

To those who have passed, congratulations!

To those who have missed out, commiserations! These exams are hard – dust your scripts off and get back on the EQE horse – there is always next year.

Case Law Review – T 1769/10

Case:

T_1769/10

Claimed Subject Matter:

Internet remote game server.

The gaming of the prior art did not include:

a plurality of “game outcome servers” in which a “player management server” is physically separate and remotely located from the “game outcome servers” by network infrastructure;
a “game outcome server” that is not allowed direct access to the player database;
a player that may navigate to each “game outcome server” through a game access interface offering game links to game outcome server-supported games at the “game outcome servers”;
a game access interface that is supported by the “player management server” and displayable by the identified client device; and
player navigation that arises without the player having to register or log-on into the game outcome servers.

Comments:

It was concluded by the Board of Appeal that improving a player’s access to games and maintaining confidentiality of the player’s data in the player database were requirements to be met. In particular, a suitable technical problem was: how to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database in terms of a technical solution using technical means.

The technical solution involving technical means as claimed was essentially determined to be letting the server for maintaining the player database communicate with a plurality of game outcome servers, with respective, different games. The server for maintaining the player database was arranged to be physically separate and located remote from the game outcome servers. The game outcome servers were not allowed direct access to the player database, such that confidentiality of the player database was maintained. Player access was improved by letting the player navigate to each game outcome server through a game access interface offering game links to game outcome server-supported games at the game outcome servers through a game access interface supported by the player management server and displayable by the identified client device and without the player having to register or log-on into the game outcome servers.

In the prior art the “player management server” did not communicate with a plurality of “game outcome servers”, nor did it support a game access interface accessible by the player offering game links to game outcome server-supported games at the game outcome servers, without the player having to register or log-on into the game outcome servers. In the prior art, the “player management server” merely maintained the player database and the server has direct access to the player database. Accordingly, the above technical solution involving technical means as claimed was not rendered obvious by the prior art.

Acknowledging Prior Art in the UK

Can complying with European practice render a UK patent invalid?

Those of you familiar with European patent practice will be intimately acquainted with the joy that is “two-part form”. This is where features known from prior art cited in a search or examination report are placed in a preamble to a claim, with novel features being placed after words such as “characterised by…”. While not compulsory, it is normally requested during prosecution. An amendment to place a claim in “two-part form” is usually accompanied by an amendment adding references to the prior art to an introductory portion of the patent specification. Case law from the European Patent Office deems that these amendments do not add subject matter.

As these amendments are so common, it is easy to assume that they are also valid under UK patent law. However, this may not be the case.

The Manual of Patent Practice (MPP – Section 76.14) states that:

There may be no objection to an amendment introducing information regarding prior art, provided it does not alter the construction of the claims of the patent in suit (Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6).

Note the language of “no objection” rather than a statement that this is allowable. The MPP goes on to state:

In Palmaz’s European Patents (UK) ([1999] RPC 47, upheld on appeal [2000] RPC 631) Pumfrey J stated that the practice, allowed by Advanced Semiconductor Products OJEPO 8/94 & [1995] EPOR 97 (G 01/93) of adding an acknowledgement of prior art to the body of the specification and limiting the claim by reference to the prior art so acknowledged was too generally used in proceedings before the EPO to be challenged, but noted that caution must be exercised where the patentee himself described the prior art in terms which he proposes to use in the limitation of his claim.

In the High Court decision in Cartonneries De Thulin SA v CTP White Knight Ltd, Mr Justice Neuberger (as he then was), said that:

94. I ought perhaps add this. I would be reluctant to hold that the addition of a reference to the prior art in a patent constituted impermissible added matter. However, I accept that it could well be that, if the Court concluded that the way in which this subsequently added prior art was described in the relevant patent resulted in a different construction of a particular claim in the patent from that which the Court would otherwise have adopted, then it could well be that it constitutes added matter.

In the subsequent appeal, the Lord Justices found that an amendment to the claim based on a prior art citation added subject matter and ordered the patent to be revoked.

In Palmaz’s European Patents (UK), the late Mr Justice Pumfrey (as he then was) found that an amendment to limit a claim by reference to cited prior art would add subject matter by introducing an interpretation of the claims that was not derivable from the application as filed.

Where does this leave us?

Basically, for prosecution of UK applications the guidance is: do not amend the specification or claims to reference prior art cited later in prosecution. In particular: do not make changes to the claims that are only derivable from material in the the cited art.

When amending a European patent application that is destined for the UK, the guidance is: be careful. Make sure that the placing of the claim in two-part form can be unambiguously derived from the application as filed and keep discussion of the prior art to a minimum.

I think in most cases it would be relatively easy to argue that adding a prior art reference or placing in two-part form changes the interpretation of the claims. Whether this added subject matter would be decided on the facts but the matter is likely arguable, being open to a subjective reading of the specification. This offers an interesting strategy for UK litigation of granted EP(UK) patents that have been amended to two-part form according to EP practice; it may be worth adding a short added subject matter objection to any case for invalidity. Even if their hands are tied by common European practice, it would seem that the UK courts are receptive to revoking patents on this basis.

Case Law Review – T 0698/07

Case:

T_0698/07

Claimed Subject Matter:

The differences between the subject-matter of claim 1 and the disclosure of D1 are that the user interface of claim 1 includes information concerning at least two transactions associated with the user, instead of a single one, and that the user interface enables the user to input feedback information for the at least two transactions, instead of enabling the user only to enter feedback for a single transaction.

Comments:

In the board’s judgement, the non-technical features consist in the nature of the data which is stored in the network-based facility (“transactions”), included in the user interface (“transaction information”), and inputted by the user (“feedback information”). These non-technical features relate to the harvesting of feedback pertaining to transactions, representing essentially a commercial objective, therefore relating to unpatentable subject-matter as defined in Article 52(2)(c) EPC. Thus, these features do not contribute to any technical effect. According to the case law of the boards of appeal (see e.g. T 641/00), these features cannot support the presence of inventive step and are therefore to be disregarded in the assessment of inventive step.

The technical effect of these differences is that the user can input feedback information related to two transactions using a single interface.

The technical problem can thus be formulated, based on this technical effect, as how to improve the ease of use for the user of the feedback scheme.

The appellant has mainly argued that the alleged invention is in a technical field and that each step of claim 1 is a technical step and contributes to the solution of a technical problem. The board accepts that the alleged invention is in a technical field and agrees with the definition of the technical problem by the appellant. However in the board’s judgement the technical features of claim 1 do not contribute, in combination, to an inventive step of the subject-matter of claim 1 (see paragraph 3.3 above).

Rule 161 EPC Period Extended to 6 Months from 1 May 2011

Just a quick reminder that the Rule 161 and 162 EPC periods are to be extended to 6 months from 1 May 2011.

Updated Rules 161 and 162 EPC shall apply to Euro-PCT applications in respect of which no communication
under existing Rules 161 and 162 EPC has been issued by 1 May 2011.

The EPO Notice setting this out can be found here: http://archive.epo.org/epo/pubs/oj010/12_10/12_6340.pdf .

This is a welcome change. Before, the time period was 1 month, which was rather onerous for applicants. The 6 month time limit will likely also help the EPO, as more care and consideration can be put into substantive responses to outstanding objections on applications.

(As a quick reminder the Rule 161 EPC period sets a time limit in which a response needs to be filed at the EPO addressing any deficiencies noted in the PCT Search Report Written Opinion or in the International Preliminary Examination Report. This may be comments in a letter and/or amendments. If this is not filed the European application is deemed to be withdrawn. Rule 162 EPC sets a period in which to pay excess claims fees. See previous post: here.)

Case Law Review – T 0004/08

Case:

T_0004/08

Claimed Subject Matter:

Method and system for refreshing browser pages

The salient difference lies in the preliminary use of a set of functions which can modify a DOM directly. The term directly is not entirely clear, but the Board understands it to refer to functions which are, in some sense, relatively simple. When considering the whole set of functions available for modifying a DOM, some will certainly be computationally more straightforward and faster to apply, than others. The Board interprets the term directly as stipulating that the functions in the delta renderer are those which are relatively simple in this sense.

Comments:

The Board’s view is that this would have been obvious. A function’s complexity is one of the things the skilled person, a computer programmer, considers daily. She is aware that some functions are simpler and faster to apply than others. She would expect that working entirely with such functions would generally be faster than working with more complicated functions. Thus she would formulate the idea of first trying some simple functions. It is inherent in the concept of trying, that the simple functions may be insufficient. A programmer knows quite well that the set of things that can be done with a small set of functions may be strictly smaller than the set of things which can be done with more functions. It would follow naturally, that the fact that the delta renderer is insufficient must be indicated. That is all that the flag does in the main request. (See section 2.10.)