Convenience stores, found everywhere in Taiwan, are more than just retail hubs—they offer a variety of services for their customers in one stop. A notable case is a 2-kilometer stretch of a nightlife street near our office, featuring 23 stores. From quick coffees to financial services, their operations are powered by comprehensive systems in logistics, warehousing, payment, and workforce managements. Many of these systems meet the requirements for Invention patents and/or Utility model (UM) patents.
Compared to invention applications subject to the substantive examination, UM applications receive patent rights more quickly. For this reason, UM applications are more attractive than invention applications in some scenarios. Some of the UM patents that convenience stores receive include “Pre-Sale Product Exchange System (M593026)”, “Winning Invoice Verification System (M613882)”, “Paperless Pre-Order and Pick-Up Electronic Device and System Using Thereof(M655984)”, and “Human Resource Support System (M642001)”.
• Taiwan Utility Model Patent
Taiwan Patent Act defines a utility model as a creation made with respect to the shape or structure of an article or combination of articles from a technical concept based on the law of nature (Article 104). As outlined in the Formality Examination Guidelines for UM Applications, UM applications are allowable as long as the claims call for “articles” with the technical features in terms of shape, structure, or combination thereof. For instance, UM applications filed with claims that call for a system or device having the features such as “a processor electrically connected to a network device” are typically considered to meet the formality requirement and would obtain UM patents.
Nevertheless, patents of system UMs should remain cautious because the validity of their patents may be challenged, e.g., in invalidation proceedings or infringement proceedings, for the reason that the technical essence of the system lies substantially in non-physical/intangible process steps, specific data or control signal.
For example, Utility Model Patent No. M593026 with the claim that includes the recitations that “the server ... enabling one of the coffee item buttons corresponding to a predetermined coffee item, and disabling the others...” was held invalid in an invalidation proceeding in light of a prior art reference entitled the “automatic vending machine.” The Taiwan Intellectual Property Office (TIPO) determined that the automatic vending machine corresponds to the server, and the coffee item buttons are also disclosed in the prior art. Further, the feature “limiting selectable coffee items based on the amount of inserted coins” corresponds to “disabling the other coffee item buttons.”
• Dual filing strategy
To get a more resilient position in defending against a validity challenge, the dual filing system may be a strategic option. Under Article 32of Taiwan’s Patent Act, applicants are allowed to file an invention application and a UM application for the same creation on the same date. This strategy enables the applicant to first obtain a UM patent before the invention patent undergoes substantive examination. By strategically delaying the substantive examination of the invention application, the applicant can analyze prior art and monitor competitors’ products, if any, to gain a clearer understanding of the patent scope worth protecting and make necessary amendments accordingly. As a result, even if the earlier-granted utility model is invalidated, the applicant still has the chance to properly amend the claims in the invention application yet allowed and enforce the invention patent rights after it is granted.