The case puts the spotlight on a still unresolved issue: the patentability of software and pits software patent holders against those who would influence public policy concerning “exclusion rights” (intellectual property) in data processing.

The European Patent Office (EPO) recently ruled for full revocation of Amazon.com’s online gift-ordering patent – after the opposition of Fleurop Interflora Businesses and two non-government organisations in the IT field, namely the German Society of Information Sciences, and the Foundation for Free Information Infrastructure (FFII).

The contested patent, European Patent EP 0 927 945, granted to Amazon Inc. on 23 April 2003, relates to an invention in the field of computer-implemented inventions (CII). It specifies a method by which a person can purchase a product as a gift and have it shipped based on the e-mail address of the recipient. Based on this e-mail address, the system will then contact the recipient to obtain a valid postal address for shipping.

The patent is an offshoot of Amazon’s One-Click patent, which was withdrawn after the first EPO examination and never granted in Europe. It was granted in the US but partially revoked there last October due to lack of novelty. And many recall this infamous case which spurred a growing movement against software patents, calls for boycotting Amazon, a debate over which technologies are really patentable, and allegations that the US Patent and Trademark Office (USPTO) is overloaded with patent applications and does not have the resources to evaluate their validity. It also begged the question: Should extremely obvious technology be patented?

Amazon and other online sellers wanted to reframe the consumers’ purchasing mindset and make online shopping much easier. Amazon’s One-Click patent describes an online system that allowed customers to enter their credit card and shipping information just once, so that on subsequent visits to the website, all it takes is a single mouse-click to make a purchase.  After receiving US patent 5,960,411, Amazon sued rival bookseller Barnes & Noble, claiming that B&N’s similar system infringed on their patent. The companies have since settled and Amazon has licensed the patent to other retailers.

This October, however, the USPTO rejected most of the claims in the patent, following a campaign by a New Zealander who filed evidence of prior art. Of the 26 claims, only five have been deemed patentable.

One of the opposition’s main arguments against Amazon’s online gift-ordering patent – among others – was that it fell short of meeting the criteria of providing an “inventive step”, as defined in Article 56 of the European Patent Convention (EPC). The FFII also believes this is a pure software patent and prohibited by article 52 of EPC. On these grounds, the three opposing parties asked for the patent to be revoked.

Article 52: Patentable Inventions

·         European patents shall be granted for inventions [ in all fields of technology ], as far as they are new, involve an inventive step and are susceptible of industrial application.

·         The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

-          discoveries, scientific theories and mathematical methods;

-           aesthetic creations;

-          schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

-          presentations of information.

·         The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

·          Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

This reasoning is no longer foreign to the opposition division of EPO: When Amazon's representative maintained that the method to be patented comprised a computer, and therefore represented patentable new technology, the patent examiner retorted: "Computers were always able to do that. You simply programmed them!"

That the rejection was based on the lack of an "inventive step" gives Amazon the right to formulate new patent claims. Since these were violating formal prescriptions of article 123 EPC the patent was then revoked in its entirety.

According to FFII founder Hartmut Pilch, "This is highly artificial and shows that the battle over software patents is still far from being over. However, a few years ago EPO would just have followed the USA – and therefore Amazon. Today, at least the fundamental problems are better recognized.”

Georg Jakob, who represented the FFII during the hearing, stated, "This is a clear sign, that our arguments are increasingly heard even within EPO and the current practice cannot be maintained in the long run. It is only a question of time.”

The European Patent Office as an intergovernmental executive institution is not itself a party to this case. The EPO's Opposition Division acts as an independent arbiter and issues rulings in conformity with the European Patent Convention and the applicable international and European law.