Amazon one-click patent struck down

Glyn sez, "The infamous one-click patent owned by Amazon has finally been proven invalid. The USPTO has rejected many of the broadest claims of the patent following the re-examination request by blogger Peter Calveley. You can track Peter's steps to make this happen on his blog, he sums up his efforts in his last blog post."

In a recent office action, the USPTO has rejected the claims of the Amazon.com one-click patent following the re-examination request that I filed on 16 February 2006.

My review resulted in the broadest claims of the patent being ruled invalid.

In its Office Action released 9 October 2007, the Patent Office found that the prior art I found and submitted completely anticipated the broadest claims of the patent, U.S. Patent No. 5,960,411.

I had only requested the USPTO look at claims 11, 14, 15, 16, 17, 21 and 22 but the Office Action rejects claims 11-26 and claims 1-5 as well!

Amazon has the opportunity to respond to the Patent Office's rejection, but third party requests for reexamination, like the one I filed, result in having the subject patent either modified or completely revoked about 2/3 of the time.

Link (Thanks, Glyn!)

• [Ian Holmes]

  YEEESSSSSSSSSSS!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

• [Anonymous]

  How about this as an idea for reforming the patent system:

  Patent service employees cannot hold stock or benefit financially from granting patents. Doing so carries 15 year jail term on the basis it causes huge public harm to corrupt the system.

  When a patent is struck off, the patent holder (not patent office) has to refund five times the challenge fee to the person who issued the challenge. This means challenging stupid obvious patents can come a profession and companies with too much money to be constrained financially into the boundaries of fair-play are less likely to apply for them.

  It also means that the challengers will end up doing the job of patent examiner, since they are obviously not doing their job properly when they grant patents.

  A different government department or financially operational entity (not linked by authority or money) is responsible for examining the patents to challenge them than the one for granting them. This department receives the challenge fee and keeps it no matter the outcome, so no incentive to overturn or to keep challenged patents.

  Any examiner who grants too many patents which are later overturned is fired.

  Patent office does NOT have to lose money for having a patent overturned, only the employee who granted it is responsible. Patent office also keeps money from patent application regardless of its success so no real financial incentive to grant stupid patents and no money to be gained when they are challenged and overturned.

  Any company with too many patents getting struck off in a set period of time is banned from applying for new ones for a while.

  Any patent lawyer who lobbies against this is hung-drawn and quartered… especially because this will probably mean EVEN MORE PATENTS and MORE PATENT LAWYERS exist since patents will have to be narrower, it’s a good thing for them too, but some will run scared thinking they won’t get to play their little game anymore without the broken patents and try to stop it.

  What do you think?

• [BSD]

  Wassa @5
  I don’t agree that they’re universally obvious. Netflix is not obvious from the existence of Blockbuster, Columbia House, and The Internet, for instance. I would say that if there is any problem of Patents being “handed out too freely” I would point at the requirement that the office be self-funding through fees, not at the Internet.

• [sabik]

  @BSD: the problem with this approach is that there are thousands of software patents issued every year, while one being struck down is still rare enough to be newsworthy. Yet most or all of those thousands of patents are harmful rather than beneficial to the software industry.

  Things that are a net harm ought to be abolished where possible.

• [Mr Brown]

  how do you feel about a company buying up technology patents, then combing the marketplace to find (real or potential) infringements, then offering to license the tech or sue?

• [Todd Knarr]

  @BSD: Actually, Netflix IS obvious. There was a company, Excalibur Films, doing video and later DVD rental by mail as far back as the late 80s (pre-dating Netflix by at least a decade). They specialized in adult material, but the basic idea was simple: send in your list, they send you the videos, when you were done with them you returned them in the provided mailer with a new list of things you wanted, paid a small exchange fee (about equal to a normal rental payment) and they’d send you the new videos. The only thing missing from them compared to Netflix was a queue of titles you wanted that they’d use to automatically fill exchanges as you sent titles back, and to be completely honest Excalibur may have been doing even that.

• [Mr Brown]

  My patent for an iterative construct with a self-incrementing numerical termination condition went nowhere, i can tell you. those patent office guys are tough.

• [Mantari]

  I’m interesting in knowing how to file a third party requests for reexamination.

• [L.B. Jeffries]

  No clickwrap contract for you!

• [BSD]

  #2 It’s quite simple, really: Go to http://www.uspto.gov and read the relevant chapter in the MPEP (22 or 23 if memory serve). There should be at least one reasonably-informative flowchart in there.

  More generally: This is what I keep saying to the anti-patent agitators. If you honestly believe the patent is invalid, there are excellent and effective ways to attack it that don’t involve pulling down the whole system. The patent system is designed (and has been modified by courts and later rules) to protect actual inventors and stomp very hard on bad-faith abusers. Engage with it rather than trying to pull it down, and good things will happen.

• [WassabiCracka]

  BSD I’m with you on the “agitators” perspective, BB gets a lot of copyfight-agitators as well. Some of the criticisms get a bit extreme, but in this case the importance of this ruling is underestimated. The larger problem with the Amazon one-click patent and others like it is the manner in which patent examiners grant Business Method Patents. The web and other technologies are a new paradigm, and as with other areas of the law (copyright, security, privacy, surveillance, ecommerce) it has taken awhile for the American legal system to adjust. Business Method Patents were being handed out too freely to any software company that could re-word, dazzle, be-guile, the reader with re-hashed business methods adopted to computers, etc. These functionality adaptations were an “obvious” next step in the evolution/use of technology. A business method that drives toward convenience for the customer is too obvious to qualify for a patent, and an unreasonable monopoly to impose on the marketplace.

• [Sylvia Else]

  Sees to me that even Amazon’s site isn’t an implementation of their own patent. What is the single action by which you can place an order? It seems to me that two actions are required – first move the mouse pointer to an appropriate position, and then click on it.

• [John H.]

  Yeah, and how many years did it take them to finally do this obvious, obvious thing? Depresses the hell out of me.