Amazon One Click Patent is alive and clicking away - the saga continues.

amazon_one_clickWhen the patent office rejected all the claims of Amazon’s One Click Patent last month, the blogosphere rejoiced. But I knew better.

As an IP attorney, I know that when the patent office rejects a claim, that is just the starting point. You start from what the Patent Office rejected, review the reasons for the rejections and come up with creative way to rewrite your claims to get around the issues raised by the examiner. In fact, in my view, if the examiner doesn’t reject your claims, then your application was deficient, because it means that your claims weren’t broad enough.

In this case, the issues were even simpler. During the re-examination procedure, the patent office reviewed a lot of references and many old systems (referred to as Prior art) to find if the Amazon’s one-click was novel or not. The patent office found that some older systems had “one click” type features, and hence the Amazon claims, as written, were invalid.

However, when the Amazon’s claims for the One Click Patent were rejected, the patent examiner specifically said that if Amazon clarified the language of the claims, and very slightly narrowed them, the claims will be allowable and the patent will be reissued. And it seems Amazon did exactly that.

Here is the relevant part of the from the examiner’s comments (10/9/07):


And in response, Amazon modified the claims to (11/15/07):


Which essentially says that:

  • your system needs to have a shopping cart module; and

  • a one click module; and

  • if somebody pushes the one-click buy button,

  • the system has to complete the transaction

  • without the use of the shopping cart module.

Before this change, the claim was a bit fuzzy. The examiner, appropriately, left an “out” by saying that a new search will need to be performed (11/15/07).

further search amazon_patent

So the saga continues; the patent is not dead - it is alive and clicking away.

Generally at this point, the patent office will typically grant the patent (or as in this case, finalize the re-examination proceedings) but this is not a typical patent. Even though I understand the reasons why the patent office allowed this patent, I equally understand the outrage this patent has generated.

What happens next? The reexamination request will continue within the patent office and at some point the patent office may issue another office action accepting the changes and reissuing the patent with a new number (typically starting with REXXXX) or the office may find additional references that have both shopping cart and one click systems to show that the patent is not-novel or it is obvious and may reject the claims of the patent. In that case, Amazon can appeal to the Board of Patent Appeals and then to the Court of Appeals for Fed. Cir.

Can Amazon sue other website operators in the mean time? Absolutely yes. Once the patent goes through the reexamination process, it may lose some of its breadth but whatever remains is stronger and harder to attack. And of course, it is still a valid patent while it is going through this re-examination procedures.

After reviewing some of the documents, I am not as puzzled as to how this patent was granted. Even after extensive search and even a bounty of $40k+, there is nothing out there which shows a system where you can buy something with one click AND buy something using a shopping cart within the same system (the AND part is important).

Recently the Supreme Court came up with a broad definition of when an invention is “obvious” and not patentable. I expected the patent office to reject the One Click patent based on the new definition of obviousness, perhaps in the next office action!

I recently wrote about the patent auctions that raised $10M+. A couple of the patents sold of $1M+. So despite these esoteric patent office proceedings, the patents continue to have a real value, some times it comes from the underlying technology, sometimes it comes from being able to prevent your competitor from doing something, and other times the patents provide a perception of strength to others.

Happy thanksgiving. Let’s all just click away and get our Christmas shopping done.

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