More Thoughts on Computer Implemented Inventions: The Amazon Gift-Giving European Patent

This article was included in our Summer 2010 edition of Inside IP magazine.

While the Amazon US patent for its “one-click” technology has survived re-examination with minor amendments, corresponding European patent protection has not yet been settled.  The original European patent application was withdrawn and two separate divisional applications were filed.  The claims of the first divisional application relate to the one-click invention and were refused by the Examining Division of the European Patent Office (EPO).  An appeal against that refusal is in progress, with an Appeal Board hearing scheduled for later this year.  The other divisional application was directed to a method of “gift-giving”.  A patent was granted but successfully opposed, on grounds of added subject matter and lack of inventive step. Amazon appealed the Opposition Division’s revocation of the patent and the Appeal Board issued a Decision (No.  T1616/08) in November 2009.  Although the decision does not alter the law on the patentability of computer implemented inventions, it provides a useful example of the assessment by the EPO of inventions that relate, in part, to excluded subject matter.

The granted patent, EP 0 927 945 (“Method and system for placing a purchase order via a communications network”) claims a method in which a gift giver provides an e-mail address for a gift recipient.  An e-mail is then sent to the recipient, requesting delivery information,including their postal address.  Gift delivery is then initiated electronically, based on the received delivery information.

The Appeal Board overruled the Opposition Division’s rejection of the patent for added subject matter but maintained the rejection of the granted claims for lack of inventive step.  The claimed method was considered to address the problem of a delivery address not being known at the time that the gift order is received.  The Appeal Board considered this problem to be solved by a non-technical step of the vendor asking the recipient for their address.  The mere use of technical means, such as a computer system and e-mail, to make the request did not contribute to the consideration of inventive step, since the invention used those means in a straightforward, conventional manner.

Amazon filed a number of auxiliary requests, in which the claims were amended to specify additional features such as the selection of an item displayed on a website and the extraction of delivery message from a reply to the e-mail.  These were also rejected for lack of inventive step, on the grounds that shopping carts were well known in web commerce applications and that the mere idea of extracting information automatically was automation of a step that would previously have been performed manually.

The Decision provides confirmation of certain aspects of the assessment of inventive step.  The Appeal Board confirmed that the notional “person skilled in the art” must be a technically skilled person and, therefore, the relevant art cannot be a field of business or administration.  In this particular case, the skilled person was considered to be a programmer or computer scientist and only those elements falling within that field of expertise could be taken into account.

Meanwhile, the patent is down but not yet out.  A third auxiliary request included further amendments, specifying the reception and persistent storage of an identifier of a client computer system used by the gift-giver and the use of a single action, or “one-click”, to order an item.  The Appeal Board remitted the third auxiliary request to the Opposition Division for further review, with particular regard to the admissibility of the amendments, without commenting on inventive step or technical character.  However, further insight into the consideration of these issues might be provided in due course, through the Opposition Division’s review and from the upcoming Appeal Board Decision on the related “one-click” divisional application.

Decision T1616/08 can be accessed via URL: http://legal.european-patent-office.org/dg3/biblio/t081616eu1.htm

Diana Pisani 14 Jun 2010

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