One click is not inventive says EPO
The Technical Board of Appeal of the European Patent Office has handed down its decision in case T 1616/08 regarding a divisional patent (EP 0927945) to Amazon’s controversial patent for one-click ordering. This divisional patent allows for a consumer to place a gift order with one click. After ordering, the recipient is contacted by the vendor with a request for delivery information, and this information is automatically extracted from the reply and used to dispatch the gift.
The patent was opposed by Gesellschaft für Informatik e.V., Fleurop-Interflora European Business Company AG and Förderverein für eine Freie Informationelle Infrastruktur e.V. on two principal grounds: first, that two of the claims contained subject matter over and above that contained in the application as originally filed, and secondly, that claim 1 was obvious.
The Technical Board of Appeal dismissed the objection of added subject matter on the basis that, though not explicitly stated, the subject matter in question was clearly implied by the description and would be obvious to anyone reading it.
When considering the question of obviousness (lack of inventive step), the Board dismissed a number of aspects of claim 1 as being non-technical (including asking the recipient for his address and the idea of having the vendor contact the recipient) and therefore not able to be included in any consideration of inventiveness. The only aspects that were considered technical were the computer system itself and the use of email to contact the recipient. However, these were already well known at the priority date and the invention does not make use of them in any way that could be construed as inventive, being rather a straightforward, conventional use of these systems. As the Board points out in its report (section 4.3):
The board does not deny that... the claimed system is new (over the notorious prior art) and involves technical considerations. This is however not enough. Novelty is not denied and technical considerations do not necessarily have inventive quality.
With regard to the feature whereby the information is automatically extracted from the recipient’s reply, an automation of a previously manual process, the board considered that the idea behind this feature is not in itself inventive. The details of the automation may be so but they are not specified. This means that it is up to the skilled person to derive this method for himself, and this feature is therefore not inventive.
The final conclusion of the Board was that claim 1 was not inventive. The case has been remitted back to the Opposition Division for further consideration on the basis of amended claims, but in the meantime it serves as useful guidance for what may be considered when determining inventive step in software patents.
28 May 2010