Monday, September 5, 2011’s one click patent application all good to go

It has been eight years since secured allowance for its New Zealand patent application 503311 titled “Method and system for placing a purchase order via a communications network”.  The application is better known somewhat inaccurately, as’s “one click patent” or “1-click patent”.

It was great to see IPONZ recently dismiss an eight year opposition in, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011).  The application will now proceed to an issued patent.

For me it’s a bit like coming across a pet lamb you’ve put out to pasture.  A little older, a little leaner, but still healthy.

Preliminary matters

IPONZ published acceptance (allowance) of the patent application on 20 May 2003.  Right at the end of the 3-month opposition period, on 28 August 2003, Pat Costigan filed his own Notice of Opposition.  Following a quiet word from IPONZ and a generous extension he filed a replacement Notice of Opposition on 29 September.

The applicant then filed a counterstatement.  The opponent filed evidence in support of the opposition.  The applicant filed evidence in support of the application.  Both sides obtained extensions of time for various reasons for submitting documents.

The now defunct Information Technology Association of New Zealand (ITANZ) also filed a Notice of Opposition to the patent application.  The organisation withdrew following claim amendments made by the applicant.

It was the opponent’s objections to these claim amendments and his objection to the applicant’s requests for extension of time that led to the first hearing on 24 February 2005, reported as, Inc v Patrick Ryan Costigan [2005] NZIPOPAT 7 (21 March 2005).

Extensions of time

The Hearing Officer allowed the extensions of time requested by the applicant.

The opponent had objected to the extensions of time, stating that he had put some important software development work on hold while the issue of the patent application was settled.

In response, the Hearing Officer observed that “it appears to me that it may be the opponent’s own choice to hold off on this development work.  If this is so, then any prejudice to the opponent in this respect is self-imposed.”

Claim amendments

The Hearing Officer considered the applicant’s amendments to be allowable.

He politely pointed out to the opponent that he appeared to have no idea how patent claims worked.  The Hearing Officer observed that:
“[t]he opponent has objected to these proposed amendments.  I have read the opponent’s submissions and the opponent is, in my view, incorrect.  His understanding of the claims and their interpretation is not correct.  It is a feature of patent claims that the more integers there are in a claim the narrower becomes the scope of that claim.”
Further steps

The opponent seemed to throw in the towel after that.  He filed evidence in reply in mid 2006 but took no observable part in further proceedings.  There was a lengthy delay of 5 years before the opposition went to a full hearing on 10 June 2011.  The opponent didn’t appear at it.

I will cover the June 2011 hearing in the next post.

Photo courtesy of author ambert under Creative Commons licence.

No comments:

Post a Comment

Related Posts Plugin for WordPress, Blogger...