Digital Majority

FFII submitted in 2004 an opposition at the European Patent Office against the famous Amazon one-click patent EP927945 "Method and system for placing a purchase order via a communications network". This broad software patent is listed n°10 on the FFII's webshop poster and impacts any webshop running on the internet. Its american cousin has been already used by Amazon to sue Barnesandnoble, and it has been recently rejected by the USPTO for evidence of prior art.

Three years after, on the 30 July 2007, the Opposition division of the EPO finally woke up out of its sleeping mode, and issued a preliminary decision. Here is what they are answering to the FFII's opposition:

5) Patentable invention, Article 52(2) and (3) EPC.

The actual practice of the EPO concerning computer implemented invention leads lo consider subject-matter as non patentable only if
it does not include a single technical feature.
In the present case, at least a computer system is included in the granted subject matter.
Therefore, the Opposition Division is of the opinion that the granted claims fulfill the requirements of Article 52(2) and (3).

The oral proceedings will happen in Munich at the EPO (Grasserstrasse 2, PschorrHofe, D-80335 Munchen) on the 7 December at 9:00 in Room 1662. The debate will be accessible to the public.

Here is the whole preliminary decision:

JBescheid/Prolokoll (Anlage) Communicalion/Minules (Annex) Nolilicalion/Proces-verbal (Annexe)

JDatum Blatt Anmelde-Nr.:
Date 30 . 07 . 2007 Sheet l ApplicationNo.: 99 105 948 . 6
Date Feuille Demande nr:

Facts and submissions

1) European patent EP-B1-927945 is based on the EP application EP-A-99105948.6 filed on 1 1.09.1998 and claiming priority of us928921, dated 12-09.1997, and us465O3, dated 22.03.1998.

Title of the patent
Method and system for placing a purchase order via a communication network
Patentee (hereinafter referred as PA)
Amazon.com, lnc
Seattle, WA 9801 (us)
Date of publication and mention of the grant of the patent
23.04.2003 Bulletin 2003/17

2) Three oppositions have been filed against this patent

2-1) Opponent 1 (hereinafter referred as oP1), Gesellschaft fur lnformatik ev, filed grounds for opposition with a letter dated 27.08.2003 and paid the opposition fee on
1 6.01 .2004. As grounds for opposition, oP1 cited Art. 1 OO(a) in combination with Articles 52(2) and (3) and Article 56 EPC. ln a new letter dated 14.01.2004, OP1 presented his arguments related to Article 100(a) and added a ground for opposition based on Art.1OO(b). ln summary, OP1 asked for the revocation of the patent entirely and presented the
following opinions
a) claims 1 to 6 relate to excluded subject-matter according to Articles 52(2) and (3)
b) The disclosure of the patent in suit does not allow the person skilled in the art to carry out the subject-matter of claim 2 (Article 83 EPC).
c) The subject-matter of claims 7 to 15 does not fulfill the requirements of lnventive step as defined by Article 56 EPC.

As an auxiliary request, OP1 requested Oral Proceedings

2-2) Opponent 2 (hereinafter referred as OP2), Fleurop lnterflora European Business Company AG, filed an opposition on 26.9.2003. As grounds for opposition oP2 cited Article 1 OO(a) in combination with Article 52(2)(c) and Article 56 EPC and Article 100(c) in combination with 123(2) EPC. Further arguments were presented with a letter dated 17.12.2003. ln summary, OP1 asked for the revocation of the patent entirely and presented the following opinions
a) claims 1 and 7 relate to excluded subject-matter according to Articles 52(2) and (3)
b) Subject-matter of claims 1 and 7 goes beyond the disclosure of the originally filed application.
c) The subject-matter of claims 1 and 7 do not fulfill the requirements of lnventive step as defined by Article 56 EPC.
d) The claimed priorities are not validly claimed.

As an auxiliary request, OP2 requested Oral Proceedings.

2-3) Opponent 3 (hereinafter referred as OP3), Furderverein fur eine Freie lnformationalle lnfrastruktur e.v., filed an opposition on 23.01 .2004.

ln summary, OP3 asked for the revocation of the patent entirely and presented the same arguments as those of OP2. As an auxiliary request, OP3 requested Oral Proceedings.

3) PA replied to the opponents with a letter dated 24.08.2004

ln summary, PA requested the rejection of the three oppositions and presented following opinions.
a) Opposition 3 should be deemed inadmissible because signed by a person who could not represent a party in front of the EPO.
b) The priorities are validly claimed.
c) The granted claims are supported by the original filed disclosure (Article 123(2) EPC)
d) The invention is disclosed in a manner that is sufficiently clear and complete to be carried out by a skilled person
e) The claimed subject-matter relates to a technical field and solves a technical problem (Article 52(2) and (3) EPC).
f) The claimed subject-matter involves an inventive step.

As an auxiliary request PA requested Oral proceedings

4) The two independent claims of the granted patent are following claims 1 and 7

(M1.1) A method in a computer system for ordering a gift for delivery from a gift giver to a recipient, the method comprising:
(M1.2a) receiving (1401, 1404)from the gift giver an indication that the gift is to be delivered to the recipient
(M1.2.b) and an electronic mail address of the recipient; and
(M1.3) sending (1409) to a gift delivery computer system an indication of the gift and the received electronic mail address,
(M1.4) wherein the gift delivery computer system coordinates delivery of the gift by:
(M1.5a) sending (1501b) an electronic mail message addressed to the electronic mail address of the recipient, the electronic mail address requesting that the recipient provide delivery information including a postal address for the gift;
(M1.5b) and upon receiving the delivery information, electronically initiating (1 701 -1 708) delivery of the gift in accordance with the received delivery information.

(M7.1) A computer-readable medium containing instructions for controlling a computer system to coordinate the delivery of a gift given by a gift giver to a recipient, by a method
comprising:
(M7.2a) receiving (1401, 1404) from the gift giver an indication that the gift is to be delivered to the recipient
(M7.2.b) and an electronic mail address of the recipient;
(M7.3) and sending (1409) to a gift delivery computer system an indication of the gift and the received electronic mail address,
(M7.4) wherein the gift delivery computer system coordinates delivery of the gift by:
(M7.5a) sending (1501 b) an electronic mail message addressed to the electronic mail address of the recipient,the electronic mail address requesting that the recipient provide
delivery information including a postal address for the gift;
(M7.5b) and upon receiving the delivery information, electronically initiating (1 701 -1 708) delivery of the gift in accordance with the received delivery information.

5) following documents were cited by the opponents

D1 The bell System Technical Journal "Language Development Tools". 1978, Vol 57, No6, Part2
D2 US-A-5737729
D3 Patent Abstract of Japan, 04-153795
D4 US-A-5555496
D5 Print out from www-flreurop.com
D6 Correspondence between Fleurop lnterflora Netherlands and Switzerland.
D7 Auslegung von Art.52 des Europaischen Patentabereinkommens hinsichtlich der Frage, inwieweit Software patentierbar ist, Von Prof Karl Friedrich Lenz.

Preliminary opinion of the opposition division

1) admissibility of OP3

The opposition Division is of the opinion that Mr Koglin fulfilled the requirements of Article 134(7) EPC at the time he filed the opposition for OP3. The fact that Mr. Koglin was entered only afterthat date in the list of European Representatives is not relevant.

The Opposition Division is of the preliminary opinion that oP3 filed correctly its opposition.

Nevertheless, in order to avoid useless discussion, the Opposition Division will appreciate if M. Koglin can provide a document proving that he was acting as legal practitioner a the date of filing of the opposition.

2) Priority issue

The claimed subject-matter is based on the description page 12, line 17 onwards and figures 10 to 18. This part of the description and figures corresponds exactly to the content of the priority document us465o3. Therefore the claimed subject matter validly claimed this priority which is 23 March 1998.

3) Enabling disclosure

The opposition division is of the opinion that a person skilled in the art will be able to carry out the claimed subject-matter. The patent contains relatively few details concerning the technical implementation of the claimed subject-matter, nevertheless, the opposition division is of the preliminary opinion that a person skilled in the art , a computer specialist, will be able to implement the claimed subject-matter, see also the discussion on inventive step.

4) Extension beyond the originally filed application

OP2 is of the opinion that the deletion of two features referred as M1`3 and M1`4 from the originally filed claim 1 infringes the requirements of Art.1 23(2) EPC. ln its preliminary opinion the Opposition Division agrees with the patentee to consider the deletion of these two features as not infringing the requirements of Article 1 23(2). At least the embodiment of Figure 10, which corresponds to the core of the claimed subject-matter, presents these two characteristics as being optional.

OP2 also considered that features M1 .1 , M1 .5a et M1 .5b introduced subject-matter.

Concerning feature M1.1, taking into account the formulation of claim as a whole, the Opposition Division cannot follow the argumentation of the opponent because it is clear from the wording of the claim that gift giver will not send personally the present, which would effectively constitute an extension of the originally filed disclosure.

Concerning feature M1.5a, it is known from the description, column 12, lines 50 to 52 that an attempt is made via E-mail to contact the recipient and gather sufficient delivery
information. For the Opposition Division, "sufficient delivery information" implicitly refers to a postal address. A basis for feature M1 .5a can therefore be seen in the originally filed description.

Concerning feature M1.5b, it is evident from the disclosure that the method is carried out by a computer system and that therefore the initiation of the delivery is made electronically.

The Opposition Division is therefore of the preliminary opinion that granted claim 1 does not infringe the requirements of Article1 23(2).

Concerning claim 7, oP2 added the objection that the original disclosure does not disclose a "computer readable medium" as claimed in claim 7.

The Opposition Division is of the opinion that, as method in computer system are disclosed then, at least implicitly, computer readable medium for carrying out the method are also
disclosed.

The Opposition Division is therefore of the preliminary opinion that granted Claim 7 fulfills the requirements of Article 1 23(2).

5) Patentable invention, Article 52(2) and (3) EPC

The actual practice of the EPO concerning computer implemented invention leads to consider subject-matter as non patentable only if it does not include a single technical feature. ln the present case, at least a computer system is included in the granted subject-matter. Therefore, the Opposition Division is of the opinion that the granted claims fulfill the requirements of Article 52(2) and (3).

6) Novelty

All the parties were of the opinion that the subject-matter of granted claims is new. ln view of the available documents, the Opposition Division shares that opinion.

7) lnventive step

7.a) Cited prior art documents

Document D1 was brought by OP1 for a discussion on enabling disclosure for the subject-matter of claim 2 and is not relevant fordiscussing the inventive step of claims 1 and 7.

lt has to be noted that, as the Opposition Division is of the preliminary opinion that the priority of us465o3 is validly claimed, document D2, published after the priority dated
cannot be considered for assessing inventive step.

Document D6 appears to relate to an internal correspondence between Fleurop lnterflora Netherlands and Switzerland and the public availability of that document is prima facie in
doubt.

Document D7, relates merely to a personal opinion on patentability according to Article 52 EPC and is not in fact related to the particular patent in suit. D7 is not relevant for the present examination.

The other documents D3, D4 and D5 showthat it was well known before the priority date of the patent in suit to provide a computer system for ordering and delivering a gift. The subject-matter of claim 1 differs from the teaching of these documents only by the fact that the gift giver communicates only the E-mail address to the computer system which then contacts the receiver for obtaining the postal address.

7.b) Problem solved by the claimed subject-matter

According to the present examination practice at the EPO, a technical problem has to be solved in order to acknowledge an inventive step.

According to the Patentee, see page 16 of his reply to the opposition grounds, the granted patent provides a solution to the problem of " how gift giver is relieved from the burden of knowing or searching for the exact postal address of an intended recipient at the time he/she initiates the donation of the gift".

The solution as specified in the claims is that, the gift giver provides the computer system with the E-mail address of the recipient and the computer system will directly ask, via E-mail, the recipient to communicate the postal address.

The Opposition Division is ofthe opinion thatthe such problem is not oftechnical nature and that the solution is worded in such general technical terms that an inventive step
cannot be acknowledged.

Starting from a standard and notorious technical system comprising a computer system receiving information, sending mails, and initiating an action, the person skilled in the art
has adapted that notorious technical system for solving the above mentioned problem which is of non technical nature in order to arrive at the claimed subject-matter of claim 1.

The technical adaptation of the computer system, or the technical implementation of the solution to that non technical problem in computer system, is disclosed neither in the description nor in the claims. The technical changes allowing a computer system to carry out the claimed subject-matter are not defined.

ln the view of the Opposition Division it can only mean that the person skilled in the art, a programmer or a computer specialist, once he received the requirements specification to program the system with the solution to that non technical problem, will in a straightforward manner do it without solving any special technical problem bound with this particular implementation. Should it be the case that the technical implementation required the person skilled in the art to solve a technical problem and therefore to make a technical
invention, it has to be noted that there is no reference in the originally filed application to such eventuality. Should it be the case, then the originally filed application suffers from insufficiency of disclosure.

The Opposition Division is more of the opinion that the granted claim 1 relates to subject-matter solving in technically straightforward manner a non technical problem and therefore does not fulfill the requirements of inventive step according to Article 56 EPC.

The same reasoning applies mutatis mutandis to the subject-matter of claim 7.

Concerning the additional features of the dependent claims, the Opposition Division does not either recognize any technical problem solved by these features and therefore does
not acknowledge an inventive step to any of the dependent claims.

8) Oral proceedings

During the Oral Proceedings, the parties will have the opportunity to present their arguments on the different grounds of opposition presented by the Opponents.

Let me make a comparison:
You apply for a patent for an umbrella with a new eagle picture printed on the lining.

1. a claim on the umbrella is a claim for a technical thing which is patentable if its technical features are new and not obvious, but without new technical features, you may say, the umbrella is not new.
2. even if the umbrella claim has no new technical features, it is still an invention (but not yours!).
3. adding a new eagle picture printing to the lining may be considered as a new umbrella, but definitely not as a concrete technical solution to a technical problem. Even if your eagle picture is a remarkable artistic creation, to print it on the lining of an umbrella is technically straightforward.

Loading a new ingenious computer program into the memory of a computer is technically equally straightforward. That's the essence of the preliminary decision.

sK²

Amazon is trying to have an opinion of the UKPO on whether or not their patent is a software patent:

http://www.ipo.gov.uk/patent/p-decisionmaking/p-challenge/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/289/07

Mr Thorpe has refused to provide them an opinion, considering that there are opposition proceedings currently running at the EPO.

In light of the statement:

In the view of the Opposition Division it can only mean that the person skilled in the art, a programmer or a computer 
specialist, once he received the requirements specification to program the system with the solution to that non technical 
problem, will in a straightforward manner do it without solving any special technical problem bound with this particular 
implementation. Should it be the case that the technical implementation required the person skilled in the art to solve a 
technical  problem and therefore to make a technical invention, it has to be noted that there is no reference in the 
originally filed application to such eventuality. Should it be the case, then the originally filed application suffers 
from insufficiency of disclosure.

It looks to me as if the EPO is interested in how hard it was to write the computer program. Part of this I like. Patents are
supposed to contain 'teachings'. That is the tradeoff — as society we allow people a legal monopoly in exchange for a secret.
Now, I have yet to read a software patent — and I have read thousands — that actually discloses a secret. If you hand a
programmer a patent the only useful information he or she will get from it is a statement of 'what this program is supposed
to accomplish'. If the programmer already knows how to do such a thing, this will be enough to let him or her get on with the
job. If the programmer _doesn't_ already know how to solve the problem, then no more reading of the patent will help, because
the patent doesn't contain information at the appropriate level of abstraction. What the programmer would like, instead, is
to be able to read a reference implementation. That would free up any secrets there. And therefore, I have continued to
argue, the proper level of protection for software is copyright, not patenting.

It looks to me as if the EPO now agrees with me that the only reason that programmers can implement Amazon's patent is
because there is no secret there — just a routine problem to be solved. But it also looks to me as if they also believe that there do exist patents, which reveal secrets (discolose a teaching) in software, that would not have been obvious to a programmer
skilled in the art. And that those patents are legitimate because the claims are sufficient to disclose such a teaching.
Unlike this one. So they are saying 'no teaching here — therefore no patent' . Either there is no teaching, because the
thing is obvious (and thus it fails the inventive step) or because the patent holder didn't properly disclose the teaching.
And they believe that the problem was the first, ("but don't come back bothering us with any arguments about how non-obvious
it was, because in that case we will just change the reason we rejected it. Either way you lose.")

All well and good, but the question is, when would they get around to applying the 'is this patentable due to subject matter'
test. We would like them to check this _first_, conclude that it is software, and reject it right away . It looks as if either a) they consider software patentable as long as it runs on a computer; or b) it is only after they determine that the proposed invention
discloses a teaching which is not obvious to one skilled in the art that they go around and check and make sure that the teaching
doesn't only refer to a computer program. This is a backwards way of doing it, and will cause them lots of extra work, but we have
seen weirder things out of the EPO.

We need to watch them reject some more things before we can tell for sure how they are working. This may be worded
this way only due to its history, it face-saving nature, and the fact that it protects the EPO from lawsuits. After all, you cannot expect the EPO to start issuing statements that say 'well, we granted this patent because this was in the era when we were
illegally granting software patents, in violation of the EPC, as quickly as we could receive them. We were wrong, sorry.' If they
did say something like that, then all the patent-holders would be withing their rights to sue the EPO for having not done their job
properly in the first place (which is true), leaving them with a company whose business model is based on patents which are now
worthless. These unhappy holders of software paents would use this statement as an admission of wrongdoing to get plenty of damages. So it may be that the EPO is currently in the mood to revoke challenged software patents, knowing in their hearts that they are doing so because it is software — but never being willing to say that, and always finding some other way to invalidate it.

To test this we would need to try to invalidate a software patent that the EPO thinks properly discloses a teaching. I claim
that none of these exist. Anybody know of one that the EPO believes in? If the EPO has quietly moved to my position, then
we have won. We can invalidate any software patent that gets in our way. But we'll need to overturn a lot of them before we
can conclude this.

Laura Creighton

Hi I have made a reexamination request for the original "One-click" patent in the US (Amazon were recently forced to amend their claims) based on some prior art I found. See my blog http://igdmlgd.blogspot.com for details.

Today a new IDS went live from Amazon on the USPTO PAIR site related to my reexamination request.

It cited a single piece of art, that may be of interest to you given that this is the opposition to the "gift-giving" incarnation of the one-click patent (I haven't had a chance to look into its relevance myself yet or see if it is even new to you).

US Patent 5513117 "Apparatus and method for electronically dispensing
personalized greeting cards and gifts".

You can access it, for example, at http://patft.uspto.gov/netacgi/nph-Parser?patentnumber=5513117
or the first entry in the google query http://www.google.com/patents?q=5513117

Hope it might be of some use. Note: I am not attempting to give legal or professional advice, I am not a lawyer, blah, blah etc…