Monday, 18 April 2016

Inescapeable Priority Trap - T 1983/14

In the case T 1983/14, the patentee hat gotten into an inescapable trap situation by adding a limitation to the claim which had been disclosed in the EP application as originally filed but not in its Irish priority application. To make it even worse, the patentee had publicly used the invention during the priority period.

The patent related to an apparatus capable of topping up a prepaid credit on a mobile phone as well as purchasing other products (judging from the priority date 2004 I presume that the other products included ringtones, which was quite fancy at that time). The feature in question was that the "mobile telephone credit product" and other products on the apparatus were invoiced as one transaction".

The deletion of this feature would have contravened Art. 123(3) EPC while keeping the feature renders the priority claim invalid such that the patentee's prior use is prior art.

The Board points out that there is an analogy to the inescapable trap in G 1/93 as follows:
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.
 This blogger's attention was drawn to the "unambiguous disclosure" test applied by the board: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.

In other words, a statement is not unambiguous if it is not open to any other reasonable meaning. I do not remember to have seen this test in the EPC case law and wonder if it could be helpful? As an opponent, it would be possible to disprove unambiguous disclosure by presenting a reasonable alternative interpretation. However, the discussion would then probably shift to whether or not the interpretation is still reasonable or not, which is not much different by the


MaxDrei said...

Sometimes I think commentators read too much into the words of a decision. The Gold Standard is "unambiguous". That means "free from ambiguity". Here, the Board decided that the support relied upon was not free from ambiguity. End of story.

What a claim discloses, and what it embraces within its scope, are not the same thing. Just because the subject matter you want to be disclosed in the application as filed is within the scope of a claim as filed does not mean it is disclosed by that claim in the application as filed.

I know that's hard to swallow in Germany, where the courts until recently were convinced that the EPO was wrong on this issue. Is that why this decision is interesting for commentators who did their Amtsjahr in Germany?

Michael Thesen said...

The problem is that human language is never completely "free from ambiguity" of fuzziness in reality. Captious opponents, defendants and sometimes Examiners will virtually always find something to nag. The struggle is to fine a threshold for the degree of ambiguity which is still acceptable.

In this case, the threshold is "reasonable": Is the alternative interpretation presented a reasonable one or rather the unreasonable product of a mind "a mind desirous of misunderstanding" (T 190/99)?