On December 18, 2014, the Intellectual Property Court made the ruling over the administrative litigation regarding the patentability of the invention application “Method for Buying Variable Points”filed by the Taiwan FamilyMart Co., Ltd. (hereinafter "FamilyMart"). The ruling held that the method invention suffices for the non-obviousness requirement, as it is not easily achieved based on the prior art, and thus the Taiwan Intellectual Property Office (TIPO) should grant the patent right to the method invention.
The IP Court’s decision states that if the proposed invention can be easily accomplished by a person having ordinary knowledge in the pertinent art based on prior art before the application for patent is filed, no invention patent should be granted for such invention, according to the provisions under Article 22, Paragraph 2 of the Patent Act. The determination of non-obviousness of an invention shall be conducted on the basis of prior art, and considered whether it is easy to achieve the difference between the invention and the prior art. The invention as filed shall be considered as a whole, instead of considering its individual components. Furthermore, the determination on the non-obviousness of an invention or creation can be made in reference to one or more cited documents, which is different from the determination of novelty in considering only a single cited document.
The invention application filed by FamilyMart describes a method for buying variable depositpoints, by which the user can obtain a deposit code to be used later for storing deposit points to his account after he keys in the amount of the purchase points, instead of depositing the points while keying in such amount. The invented method is characterized in that the amount of the purchase points can be set arbitrarily by the user, and the deposit code must be generated through a specific processing operation based on the name of the game and the purchase points as set. Such technical feature is different from the prior art deemed by TIPO where the logistics server will generate adeposit code and send it to the electronic device after the name of the game and the purchase points are confirmed.
The IP Court opined that the patent at issue cannot be achieved by a combination of prior art references cited by TIPO, and thus it suffices for the non-obviousness requirement as prescribed under Paragraph 2, Article 22 of the Patent Act. The IP Court’s decision overruled TIPO's opinion and held that TIPO should grant the patent right accordingly.