Telstra Corporation Limited v Amazon.com, Inc [2011] APO 28 (9 May 2011)
The Australian Patent Office has rejected Amazon.com, Inc’s patent application for its 1-click ordering system after a successful opposition by Telstra Corporation Limited. However, the decision, handed down on Monday, gives Amazon a clear indication of how it can amend its patent application to overcome the rejection. This decision forms part of a long history of challenges around the world (most notably in the United States and Europe) to patent applications filed by Amazon for its 1-click ordering system which provides for a simplified process for purchasing goods online.
Telstra opposed the grant of a patent to Amazon for its 1-click ordering system on the basis that the invention was not new or inventive, and on other formal grounds.
1-Click ordering not new in light of Telstra’s “click-to-call” patent
Amazon’s patent application contained 141 claims. The Delegate of the Commissioner of Patents found that some of the claims (including the very broad first claim directed, quite generally, to a single action item ordering system) were not new in view of one of Telstra’s “click-to-call” patents, which Telstra filed before Amazon filed its patent application for the 1-click system. Telstra’s patent describes a method of making a telephone call in which a person simply selects (clicks on) the telephone number they wish to dial in an electronic directory to place a call. Importantly, the method allowed the parties to the call to make prior billing arrangements, streamlining the calling process and allowing them to make a call in only one step. The Delegate considered the placing of a call to be the ordering of an item.
Some claims not inventive in light of common general knowledge
The Delegate also found that claims 1, 2 and 4 to 61 were not inventive in light of the common general knowledge (‘CGK’) known to persons skilled in the art at the priority date. Specifically, the Delegate accepted Telstra’s submission that:
- the display of order or item information for Internet ordering systems and the use of a web browser to access that display; and
- the use of, amongst other things, clicking a mouse button over a pre-defined area of displayed information to select information or send instructions,
formed part of the CGK. The Delegate concluded that, in respect of claim 1, the “single action” was the only feature which was not already part of the CGK. He found that, “as a matter of simple logic”, one way to ensure that customers could check-out more easily (a problem the invention was trying to address) was to reduce the number of steps involved in “checking-out”, ideally down to one step.
Interestingly, although the Delegate accepted Telstra’s submission that claim 1 permits there to be one or more additional actions prior to the “single action” claimed, in assessing whether the claimed system was new, the Delegate appeared to count the number of actions required to place the order. On that basis, he excluded a number of documents published before the filing date of Amazon’s patent application which included more than one action when assessing whether Amazon’s invention was “new”.
Valid claims and next steps
Ultimately, although the Delegate found that a patent could not be granted for many of Amazon’s broader claims, Amazon concentrated its arguments on claims involving the use of cookies to enable 1-click ordering. The Delegate found that claims relating to the use of cookies were new and inventive when Amazon filed its patent application in 1997, and therefore deserving of patent protection. Subject to any appeal to the Federal Court of Australia lodged by Telstra or Amazon, Amazon can now amend its application and obtain a patent for claims relating to its use of cookie technology in the context of 1-click ordering.