Amazon's "one click" patent reaffirmed in NZ
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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.
Posted by Anonymous at 7:32:12 on September 4, 2011
The opposition is a long and complex exercise which I should not have taken on so lightly. Defending your principles can be very costly.
I believe the reason why my opposition failed is that I frankly lost energy and interest over the last 8 years and as such I did not respond to Amazon's latest rebuttals and I did not even present at the final hearing.
I believe the prior art we submitted clearly shows that a 1-click method of ordering goods online was published, and was actually being used in NZ prior to Amazon's claim to invention. I can also see that we did cite 'prior use' as one of the grounds for opposition but failed to provided evidence specifically tied to that ground. Instead we used that 'prior use' evidence (The Great NZ Shopping Mall) to support our claim of obviousness in the Statement of Case. As Ken Moon points out, this may have been a fatal flaw in our case.
I am now of poor health and I realise that there are much more important fights for me than this one.
I have clearly been out-resourced by Amazon who has spent a huge amount of money on this fight. At least I can say it was not a simple win for Amazon. I guess only time will tell how Amazon uses this patent to control Internet development within NZ.
Posted by Patrick Costigan at 11:52:54 on August 31, 2011
Posted by Dave Lane at 12:32:09 on August 31, 2011
Now that the NZ Gov't have agreed with software industry representatives that software patents stifle innovation (and cannot be justified, as "encouraging innovation" is the reason they exist to begin with), we're moving towards a firm footing.
The next battle is to have all existing software patents struck off. Otherwise, especially in the hands of patent trolls and other unscrupulous overseas corporations with impossibly deep pockets, they are a minefield which every software developer in NZ will have to negotiate at their own peril. It's worth pointing out that there aren't many NZ software patents and the vast majority are held by overseas corporations, not kiwis.
Posted by Dave Lane at 12:30:54 on August 31, 2011
Posted by Anonymous at 17:38:30 on August 30, 2011
I can also understand why the patent commissioner couldn't find any "obviously similar" patents; no sensible person would imagine in their wildest dreams that such a patent would ever be granted!
I can think of half a dozen Kiwi companies who had systems like this running on 3270 CICS terminals in the '70s - "Press F7 to order/ F9 to remove from order". Just because Joe Public gets to use it instead of the staff doesn't make it any more "original".
Actually, Gough, Gough and Hamer probably had theirs running on BSC using teletypes in the '60s.
Posted by Nuther Oldy at 11:59:45 on August 30, 2011
The prior publications relied upon by the opponent (can be any publication and not just other patents) simply did not discose enough to fall within the scope of the carefully drafted Amazon patent claims. After all the scope of protection Amazon gets from its patent is restricted to the invention defined in the "claims" and that is all the assistant commissioner needed to focus on.
Best to read the patent specification and its claims beofre second quessing!
Posted by Ken Moon at 21:30:49 on August 30, 2011
2. I did read the patent claim. Quickly, I admit. Woo hoo, I made an order entry system, it says. "one click" (or voice command, or other single action) occurs somewhere around claim 60 of 80. The claims seemed to be more proud of remembering the client details than anything else. Gee, we have cookies! ..to do what a CICS TCTUA did in an earlier time... Big deal.
Posted by Nuther Oldy at 11:55:33 on August 31, 2011
Posted by Jonathan at 10:07:25 on August 31, 2011
The inventive step in the 1-click patent application is set out in paragraph 64 of the decision. There's a link to the decision in this article.
Posted by Matt Adams at 22:17:17 on August 31, 2011