Wednesday, September 7, 2011

One click opposition – time for law reform

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”.

The application has recently emerged from an eight year long opposition.  The decision is reported as, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011).

In an earlier blog post I covered the initial hearing dealing with an objection by the opponent to extensions of time and claim amendments.  In another post I covered the full hearing on 10 June 2011.

Crowd sourcing

In October 2003 Russell Holland and Richard Shearer from a group called Fight the Patent reached out for prior art to support a challenge to Amazon’s 1-Click patent application.

At the date of the request, both Costigan and ITANZ had filed notices of opposition.  Both parties were finalising their statement of case.

This was the first time I encountered crowd sourcing of prior art searching.  Under our current law New Zealand patent applications are not published until acceptance (allowance) which is the start of the opposition period.

The prior art request could not have been made any earlier because the actual claim scope would not have been public until allowance.

Rookie mistakes

The opponent Pat Costigan represented himself.  There are a few clear signals in the reported decisions that he didn’t present his case as well as he should have.  For example:
  • “[h]is understanding of the claims and their interpretation is not correct”
  • “[t]his is a strained interpretation of the claims and is not permissible”
  • “… any prejudice to the opponent in this respect is self-imposed”
  • “[Opponent’s witness] Janczewski … is ‘irreparably affected by hindsight’ because he was provided with a copy of the opposed application before preparation of this evidence”
  • “[Opponent’s witness] Lobodzinski’s knowledge and understanding … are not representative of the knowledge and understanding of the ‘notional skilled addressee’”.
  • “[Opponent’s witness] Faris’s … qualifications were in the field of advertising, rather than in information technology of the development of the technical aspects of e-commerce systems”
  • Out of the 18 documents cited by the opponent, “Documents 13-15, 17 and 18 were not available in New Zealand before the priority date”.  This was established by the opponent’s own witness Jones.
  • “the opponent relies entirely on the mosaicing of prior art documents …  the law is clear that mosaicing of prior art documents is only allowable if that is what the notional skilled person or team would do …  the applicant’s witnesses, unlike those of the opponent, have addressed this issue”
My comments do not imply any criticism of Costigan.  I think it is perhaps a reflection that the patent opposition process is a little complex for lay members of the public.

The way forward

The New Zealand Patents Bill 2008 will eventually come into force.

The new law provides for automatic publication of New Zealand patent applications 18 months from the earliest priority date.  This will mean crowd sourcing of prior art searching can be carried out at an early stage and in a focussed informed way.

Once relevant prior art is located, there will be a provision for bringing that prior art to the attention of IPONZ.  Any person will be able to make an assertion that an invention claimed in a patent application lacks novelty and/or an inventive step in view of prior art.  It is then up to IPONZ to assess the relevance of that prior art.  The asserter takes no further part in the process.

Which is kind of what happened here in this opposition.  I wonder whether it would have been better for everyone if the assertion provision had been available and used instead of formal opposition.

Photo courtesy of author ambert under Creative Commons licence.

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