Amazon's "one click" patent reaffirmed in NZ

Latest twist in case dating back to 2003 sees Opposition to patent fail

The Intellectual Property Office of New Zealand has upheld Amazon.com’s “one click” patent, ruling last month that a Notice of Opposition originally filed in 2003 failed to establish that the controversial patent was obvious and had already been published.

The ruling, by assistant commissioner of patents KB Poppelwell on July 21, and posted online this month, is the latest step in a legal saga that has been running since September 2003, when opposition to the New Zealand patent, which was granted earlier that year, was first lodged.

In the ruling, Poppelwell backgrounds the proceedings, noting: “Notice of Acceptance of the complete specification was published, ... on 30 May 2003.

“A Notice of Opposition was filed, ... on 1 September 2003 and was followed by an amended Notice of Opposition on 28 September 2003.

“A Statement of Case was filed on 1 December 2003 and ... the Applicant [that is, Amazon] filed a Counterstatement on 5 April 2004.”

Some amendments to the original patent specification were permitted in 2005, and the Opposition to the patent proceeded from there, with various proceedings leading up to the latest one last month.

At the July hearing, the Opposition, lodged in the name of Patrick Costigan, statutory declarations and affirmations from, among others, Auckland University associate professor of Information Systems and Operations Management Lech Janczewski.
Amazon.com trotted out affidavits from two US patent attorneys, one Australian patent lawyer, and Dennis Viehland, associate professor of Information Systems as Massey University’s Auckland campus.

Poppelwell noted with patents, “the onus of proof in opposition proceedings lies with the Opponent and that the benefit of any doubt must be given to the Applicant.”

He then looked at the two grounds of Opposition, prior publication and obviousness, and found that the Opposition had failed to establish that the Amazon patent – whose short title is “Method and System for Placing a Purchase Order via a Communications Network” – should be disallowed on those grounds.

The criteria was restricted to whether the prior publication and obviousness were apparent as of September 12 1997, the “priority date” of the proceedings.

Poppelwell ruled that at that time, e-commerce was in its infancy, and the one-click method of ordering goods online wasn’t widely known, and so the patent can’t be turned down on the grounds of obviousness.

The Opposition also cited 18 documents, including published papers and specifications for patents of a similar nature granted outside New Zealand, but Poppelwell ruled that none of them patented or described a process obviously similar to Amazon’s “one-click”, as the “core inventive concept” was different.

As for prior publication, He noted that no documents were cited by the Opposition under that ground, so “I find that the ground of prior publication is not made out.”

The full text of the decision can be found that the Intellectual Property Office of New Zealand website; the site also contains a listing of the status of the patent, number 503311, in New Zealand.