Rulings on obviousness
The court overruled the Taiwan Intellectual Property Office (TIPO)’s rejection of patent application number 092129649, which covers the invention.
The patent at issue claims a method for bargain shopping in which a trading system is introduced that provides real-time inquiry and price negotiation functions for each individual transaction through the system. The computer-implemented trading system is able to provide to a buyer all possible sale prices, and is further able to suggest ways to make a purchase, thereby enabling timely completion of each transaction.
Through implementing the method, the buyer, after choosing a specific product, may choose one of the bargaining options provided by the trading system for price negotiation, or may be directly given a suggested price by the system. If the sale price generated through the selected bargaining option is not accepted by the buyer, the trading system will provide another bargaining option for negotiation.
Therefore, the buyer can choose multiple bargaining options in one transaction until all of the options have been exhausted, and the buyer may ultimately choose to complete or abandon the transaction.
During the prosecution stage of the patent, TIPO rejected it on the ground of lacking non-obviousness. The rejection mainly relied on the combination of two citations—an academic article entitled “A cybermediary system for collective purchasing” (citation one) and Taiwan patent number TW 200301445 (citation two). Citation one introduces six types of bargain models for processing price negotiation in a collective purchase intermediary system, while citation two discloses several alternative payment methods that can be automatically selected by a telecommunications system for fare payment.
TIPO believed that the technical field of the patent was relevant to citations one and two, and that citation two provides sufficient motivation to combine its concept with citation one. TIPO concluded that the patent can be easily accomplished in view of citations one and two, and therefore said it is not allowed.
In response, the applicant pursued an administrative remedy against the decision, and eventually appealed to the IP court.
Non-obviousness is stipulated as one of the patentability requirements for an invention in the Patent Act. In particular, it says, a patent will not be granted when the invention can easily be made by a person having ordinary skill in the art based on the prior art, even if its industrial applicability and novelty fulfil the patentability requirements.
"Non-obviousness is stipulated as one of the patentability requirements for an invention in the Patent Act."
The patent examination guidelines divide obviousness into two aspects: whether an invention as a whole is deemed obvious, or whether an invention can be readily accomplished.
In contrast to the TIPO’s finding, the IP court said that even though citation one depicts several price negotiation models, each of these models requires multiple buyers to participate simultaneously to jointly negotiate with the seller for the final sale price, in order to proceed with the one-time transaction.
Moreover, the buyers may negotiate for the final sale price only in a single price negotiation model, instead of being able to select from the multiple price negotiation models for bargaining as suggested by the patent. Citation two is also silent on providing multiple price negotiation options for a user through a one-time transaction scheme.
The IP court opined that the patent has distinguishing technical features concerning citations one and two that allow the buyer to choose one of the bargaining options or that directly suggest to the buyer a retail price in a price negotiation process for bargaining in the trading system. The ground of the rejection was not properly supported by TIPO’s examination opinions, the IP court concluded. Therefore, the IP court’s judgment overruled the decision and the patent was granted.
When examining a computer-implemented business method invention, TIPO will not reject the application outright based on non-patentable subject matter, as long as the claimed subject matter conforms to the patent eligibility requirement—namely, a business method and the method is implemented through a computer hardware. A rejection will nevertheless be issued based on obviousness if no distinguished technical result is found by utilising the invented method.
Crystal Chen is a partner at Tsai, Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw
James Su is a patent attorney at Tsai, Lee & Chen. He can be contacted at: info@tsailee.com.tw
