Posts Tagged ‘Case Law’

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.

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.

Fletcher Moulton LJ explained in British United Shoe Machinery Company Ltd, v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650 how claims came to be incorporated into a patent specification and their purpose:

“As it is the duty of the inventor to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process, quantities and times which are the best he knows.

But it would be very cruel to hold him to the invention when carried out only with those best quantities and times, because a person could then take his invention in substance if he did not take it in quite the best way, and the value of the grant would be practically nothing. Hence inventors, in their own protection, took to introducing into their specifications language intended to distinguish between that which was there for the practical information of the public, and that which was there for delimitation of the invention.

Correct delimitation was of the greatest possible importance to the inventor, because if his Patent covered something which was old the Patent was wholly bad. At the same time there was the danger of confining himself to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it in its best and therefore in a very special form.

Out of that has arisen the practice, which originally was perfectly optional, of having a separate part of the specification primarily designed for delimitation. That is what we call the Claim.”