Thanks to Sarah Barclay for this article.
Back in 1997, Amazon filed a patent application for an online shopping system, which has come to be known as the '1-click' system. When Amazon filed their patent application, online shopping was still new technology.
As explained in Amazon’s application, online shopping had practical limitations. Most consumers were very cautious when giving sensitive financial information. Also, consumers needed to enter a lot of information into online forms.
The solution to these problems was the ‘1-click’ ordering system. The ‘1-click’ ordering system allowed a consumer to perform a single action that would start a process in which a consumer’s details are retrieved, an order is placed, and a payment is completed, without the consumer taking any further steps.
Patent applications were filed in various countries, including Australia. The Australian application was examined and accepted for grant by the Australian patent office in 2003. Telstra filed a notice of opposition, which started an opposition proceeding that lasted for close to eight years [1].
What is a ‘single action’?
A pivotal issue considered in the opposition was the meaning of the term ‘single action’, which was a feature required by the claims. Telstra argued that this term was unclear because it included within its scope more than one action, and should be qualified by the word ‘only’.
After referring to dictionaries and the specification, the hearing officer decided that the term ‘single action’ was not ambiguous. The specification disclosed many ways in which the ‘action’ might be implemented. The Hearing Officer decided that a single action refers to a single event and that the event might involve more than one physical ‘action’, for example, a double-click. He considered that the term ‘only’ was redundant and would not change the meaning of ‘single action’.
Novelty and inventive step
Telstra alleged that the Amazon claims were anticipated by five prior disclosures. After consideration, the Hearing Officer found that only one disclosure, a patent application belonging to Telstra, anticipated some of the claims.
Telstra also argued that the claims did not involve an inventive step. At the time the application was filed in Australia, a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act [2].
As the Hearing Officer pointed out, we need to remember that the Amazon ‘1-click’ ordering system dates back to the filing of the first patent application in 1997. The inventiveness of the system is assessed at that date. The fact that the system may have been considered obvious just a few years after that date is of no significance.
The Hearing Officer decided that the only feature of claim 1 that was not part of the common general knowledge was the feature of placing an order via a ‘single action’. However, he considered that was an obvious solution to the problem of reducing the number of steps.
But when the invention was limited to using browser cookies, the claims were found to be valid. That was because there was no clear teaching or suggestion of using cookies in any of the prior art. There also was not any satisfactory evidence that the skilled person would have considered this to be an obvious approach at the time.
Amazon was allowed 60 days to propose suitable amendments because the application contained patentable subject matter. Therefore, although Telstra’s opposition was successful, it seems likely that Amazon will be able to amend the claims and have a patent granted for their ‘1-click’ system.
Allowability of software and computer implemented inventions
Recently, there has been a lot of debate about whether software and computer implemented inventions should be allowed patent protection. An interesting aspect of this opposition was that the subject matter of Amazon’s application was not questioned. Telstra did not pursue the ground of opposition that the claims were not a manner of manufacture. Rather, the opposition focused on clarity, novelty and inventiveness, just as it would for other fields of technology.
Footnotes:
[1] Telstra Corporation Limited v Amazon.com, Inc. 2011 APO 28 (9 May 2011).
[2] PATENTS ACT 1990, section 7.
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