T 1983/14 - Inescapable priority trap

EPO Headnote

• Article 123(3) EPC prevents the removal, after grant, of a problematic, limiting feature. The problem described in G 1/93 was a violation of Article 123(2) EPC. In the present case, it is lack of novelty due to loss of priority. See point 5.3 of the reasons.

Key points

• " The Board considers the most promising basis for [the feature alleged to lack priority] to be the statement on page 4, lines 12 to 13 of the priority document: "[a]lternatively, the top-up software control module has means for printing the top-up code onto a customers receipt and adding the value of the top-up to the total receipt". Here, "adding [...] to the total receipt" could, indeed, refer to a running total, which is invoiced in one sum at the end. In other words, the statement on page 4 can be interpreted to cover the "one transaction" feature. That is, however, not enough. A basis must be direct and unambiguous. Thus, the question remains whether this statement is open to any other reasonable meaning." 

T 1983/14 - [C] - link

Reasons for the Decision

1. The invention

1.1 The invention concerns an electronic point of sale (EPOS) apparatus capable of processing the purchase of mobile telephone credit ("top-up") and the purchase of other goods and services. The apparatus issues the "top-up" as a code printed on the customer's receipt ("top-up voucher" or "top-up code"), and invoices the purchase of the "top-up" and other products as one transaction.

2. Non-attendance at the oral proceedings

2.1 Despite having been duly summoned, respondent 1 did not appear at the oral proceedings before the Board. The Board continued the proceedings, in accordance with Rule 115(2) EPC and Article 15(3) RPBA.

3. Priority

3.1 The only contested issue is the validity of the priority, and, more precisely, whether the feature of claim 1 that the purchase of mobile top-up and other products are invoiced as "one transaction" is disclosed in the priority document.

At oral proceedings, both parties agreed that "one transaction" in claim 1 should be understood as a single payment transaction between a customer and a shop attendant. The appellant referred to Figure 12 of the patent as published, which shows a receipt for the purchase of multiple items, including mobile top-up ("VODAFONE 20 EURS"), paid for in a single transaction of ¤27.17. The Board sees no reason to depart from this interpretation, since it is reasonable and within the scope of the claim.

3.3 Respondent 2 pointed out that the priority document did not explicitly mention that top-up of the mobile phone was invoiced in a single transaction with other products. Furthermore, the examples in figures 6 to 12, on which the appellant relied to explain the invention, were not present in the priority document. The Board agrees. However, explicit disclosure is not a requirement for establishing a right of priority in accordance with Article 87(1) EPC 1973. The test is whether the skilled person can derive the claimed subject-matter, directly and unambiguously, using common general knowledge, from the priority application as a whole (G 2/98, Headnote; OJ EPO 2001, 413).

3.4 The appellant indicated several passages in the priority document which, in its opinion, provided a basis for the "one transaction" feature in claim 1. Starting with the background of the invention on pages 1 and 2, the appellant argued that the whole point of the invention in the priority document was to avoid that products had to be invoiced separately, as multiple transactions.

The Board is not persuaded. The Board understands the priority document, in this introductory section, as proposing that the acts of topping-up and of payment for the topping up should not require two separate machines, but should rather both make use of only one physical EPOS apparatus, so that the attendant does not have to move between different apparatuses (page 1, lines 13 to 25; page 2, lines 27 and 28).

3.6 In light of this aim, the passages on page 3, lines 3 and 4, and lines 15 and 16, could well be read as meaning that different products are invoiced on the same physical apparatus. The Board sees no implication as to the number of payment transactions.

3.7 The Board considers the most promising basis for "one transaction" to be the statement on page 4, lines 12 to 13 of the priority document:

"[a]lternatively, the top-up software control module has means for printing the top-up code onto a customers receipt and adding the value of the top-up to the total receipt".

Here, "adding [...] to the total receipt" could, indeed, refer to a running total, which is invoiced in one sum at the end. In other words, the statement on page 4 can be interpreted to cover the "one transaction" feature. That is, however, not enough. A basis must be direct and unambiguous. Thus, the question remains whether this statement is open to any other reasonable meaning.

3.8 In the Board's view, there is an ambiguity to be resolved. "[T]otal receipt" can be read as referring to the complete physical document provided to the customer, comprising the top-up code and the receipt of payment for the top-up. In other words, both the top-up code and the price paid for the top up are to be printed on the receipt. That is, indeed, an interpretation that accords with the statements on page 1 of the priority document (see point 3.5, above). Thus, in the Board's opinion, there is no implication that the receipt is for other products than mobile top-up. Consequently, there is no direct and unambiguous implication that the purchase of other products is included in the same transaction.

3.9 For these reasons, the Board comes to the conclusion that the strict test of direct and unambiguous derivability, set out in G 2/98, is not satisfied. The subject-matter of claim 1 of the patent as granted is, therefore, not entitled to priority from [Irish patent application] IEA S2004/0045.

4. Novelty

4.1 Since the invention as defined in claim 1 of the patent as granted does not enjoy a right of priority, it is not novel in view of the admitted prior use (Article 54(1) and (2) EPC 1973).

5. Auxiliary requests 1 to 4

5.1 At oral proceedings, it was common ground that "a [...] transaction" in claim 1 according to the first auxiliary request implied that there was only one transaction. Thus, the first auxiliary request does not remedy the problem that led to the loss of priority in the main request.

5.2 The same holds for the second, third and fourth auxiliary requests. They all comprise the feature "one transaction" in claim 1.

5.3 The Board agrees with Respondent 2, that the problem with "one transaction" could not have been overcome by amendment. This is because Article 123(3) EPC prevents the removal, after grant, of a problematic, limiting feature. The problem described in G 1/93 was a violation of Article 123(2) EPC. In the present case, it is lack of novelty due to loss of priority.

Order

For these reasons it is decided that:

The appeal is dismissed.