T 0983/04 (Mobile payment part/VAZVAN) 15-02-2006

Summary of Facts and Submissions

I. This is an appeal against the revocation of European patent 0 739 526 on the ground of added subject matter (Article 100(c) EPC). Proposed amended claims in accordance with thirteen auxiliary requests were also found to add subject matter (Article 123(2) EPC).

II. The appellant proprietor filed amended claims with the statement of grounds of appeal and with letters dated 5 January 2006 and 2 February 2006.

III. At oral proceedings before the board the parties made the following requests:

The appellant proprietor requested that the decision under appeal be set aside and that the patent be maintained as granted (main request), or that the patent be maintained in amended form on the basis of one of auxiliary requests 1 to 7 filed with the statement of grounds of appeal, or on the basis of one of auxiliary requests 8 to 9 filed with the letter dated 5 January 2006, or on the basis of one of auxiliary requests 10 to 11 filed with the letter dated 2 February 2006.

The appellant proprietor furthermore requested that the opposition of respondent opponent O5 be rejected as inadmissible.

The appellant proprietor finally requested apportionment of costs and reimbursement of the appeal fee.

Respondent opponent O5 requested that the appeal be held inadmissible.

The respondent opponents O1 to O5 requested that the appeal be dismissed.

IV. At the oral proceedings before the board the parties presented their arguments on the subject whether the claim requests of the appellant proprietor contained subject matter extending beyond the content of the application as filed. After the parties' arguments were heard, the chair declared the debate closed with regard to the question of added subject matter and interrupted the oral proceedings for deliberation. The appellant proprietor inquired during the adjournment of the oral proceedings whether it would be possible to file further auxiliary requests. He was informed by the board that this would only be possible if, after deliberation, the board should arrive at the conclusion that one of the appellant proprietor's request met the requirements of Article 123(2) and (3) EPC.

After deliberation the chair announced the decision to dismiss the appeal.

V. Claim 1 of the application as originally filed reads as follows (labelling introduced by the board):

"1. A mobile payment system (43), characterised in that it is comprised of:

A) at least one portable terminal (1, 6, 8), such terminal including a mobile payment part (10, 21) and other means for entering, transmitting, receiving and printing of information relating to: the payments of bills of the telephone subscriber or the user of said portable terminal; transferring of money from the bank account of the subscriber or user to the others account; sending and receiving payment messages (13, 18, 19, 25, 29) or messages including the account balance, the statement of account, or the movement on the bank account (33, 34, 35) of the telephone subscriber or the user of the portable terminal (41, 37);

B) at least one computing station (2, 14, 24) which is located in the bank (3), said computing station including means for communicating with said portable terminal and for transferring the amount of payment (money) from the bank account of portable terminal's user and/or telephone subscriber to another bank account (17, 28), or from a customer's bank account, whose account information is entered into said portable terminal, to the calling party's account; and to receive and send messages about the account balance, the statement of account, or the movement on the bank account (33, 34, 35) of the portable terminal's subscriber or user;

C) at least one wireless communications network (4, 15, 26) through which said portable terminal can send and receive to or from said computing station said payment messages or messages about the account balance, the statement of account, or the movement on the bank account of said portable terminal's subscriber or user."

VI. Claim 1 as granted and forming the appellant proprietor's main request reads as follows (labelling by the board):

a) "A real time mobile payment system for bill payment of mobile users and/or providing users with all means for mobile banking, commerce, trading and sending and receiving information, the system utilizing

b) short message service facilities of at least one mobile wireless communication network or a digital cordless communication system (5) and subscriber/user identity module (SIM or equivalent 10, 21, 39, 42), the system comprising

c) at least one mobile terminal (1, 6, 8, 37, 41) using said identity module (10, 21, 39, 42) and comprising means for entering, transmitting, receiving, handling and displaying (11) of information essentially related but not limited to:

c1) the payments of bills of the telephone subscriber or the user of said mobile terminal; transferring of money from the bank account of the subscriber or user to the others accounts; sending and receiving at least payment messages (11, 13, 18, 19, 20, 25, 29, 33, 34, 35) or messages including the account balance, the statement of account, or the movement on the account (33, 34, 35) of the telephone subscriber or the user of the mobile terminal (1, 6, 8, 37, 41) and communicating banking, payment, and commerce related and other required messages (11);

d) at least one computing station (2, 14, 24) located in a bank (3) or any other required places, said computing station including means

d1) for direct short message communication with said mobile terminal or via messaging means of the communication network (4, 5) and

d2) for transferring the amount of payment from the account of mobile terminal's user or telephone subscriber to another account (17, 28), or from a customer's account, whose account information is entered into said mobile terminal, to another account;

d3) and/or to receive and send messages about the account balance, the statement of account, or the movement on the account (11, 33, 34, 35) of the mobile terminal's subscriber or user and communicating banking, payment, and commerce related and other required messages (11);

e) at least the one mobile wireless communications network (4, 15, 26) or a digital cordless communication system (5) through which said mobile terminal can send and receive to or from said computing station said payment messages and/or at least messages about the account balance, the statement of account, or the movement on the account of said mobile terminal's subscriber or user, and communicating banking, payment, and/or commerce related and other required messages (11)."

The main request furthermore comprises independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a smart card, and a method in a real time mobile system, respectively.

VII. Claim 1 according to auxiliary request 1 reads as follows (emphasis added by the board to indicate differences with respect to the main request):

a) "A real time mobile payment system for bill payment of mobile users and/or providing users with means for mobile banking, retail, trading and sending and receiving information in real-time basis, the system utilizing

b) short message service facilities of at least one mobile wireless communication network (4) or a digital cordless communication system (5) and subscriber/user identity module (SIM or equivalent, 39), the system comprising

c) at least one mobile terminal (1, 6, 8, 37, 41) using said identity module (39) and comprising means for entering, transmitting, receiving, handling and displaying (11) of information essentially related to

c1) the payments of bills of the telephone subscriber or the user of said mobile terminal; transferring of money from the bank account of the subscriber or user to the others accounts; sending and receiving at least payment messages (11, 13, 18, 19, 20, 25, 29, 33, 34, 35) or messages including the account balance, the statement of account, or the movement on the account (33, 34, 35) of the telephone subscriber or the user of the mobile terminal (1, 6, 8, 37, 41) and communicating banking, payment, retail or trading and other related messages (11); said messages sent and received in real time basis without setting up any telephone call;

d) at least one computing station (2, 14, 24) located in a bank (3) or other similar secure places, said computing station including means

d1) for direct short message communication with said mobile terminal through said communication system (4, 5) or via messaging means of said communication network (4, 5) and

d2) for transferring the amount of payment from the account of mobile terminal's user or telephone subscriber to another account (17, 28), or from a customer's account, whose account information is entered into said mobile terminal, to another account;

d3) and/or to receive and send messages about the account balance, the statement of account, or the movement on the account (11, 33, 34, 35) of the mobile terminal's subscriber or user and communicating banking, payment, retail or trading and other related messages (11) in real-time basis;

e) at least the one mobile wireless communications network (4, 15, 26) or a digital cordless communication system (5) through which said mobile terminal can send and receive to or from said computing station said payment messages and/or at least messages about the account balance, the statement of account, or the movement on the account of said mobile terminal's subscriber or user, and communicating banking, payment, and/or retail or trading and other related messages (11)."

Auxiliary request 1 further contains independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a user identity module, and a method in a real time mobile system, respectively.

VIII. Claim 1 according to auxiliary request 2 differs from that of auxiliary request 1 in that paragraphs d and d1 read as follows (emphasis by the board):

d) "at least one computing station (2, 14, 24) located in a bank (3) or other similar secure places, said computing station including means

d1) for communication with said mobile terminal through said communication system (4, 5) via messaging means of said communication network (4, 5) and"

Auxiliary request 2 further contains independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a user identity module, and a method in a real time mobile system, respectively.

IX. Claim 1 according to auxiliary request 3 has the same wording as claim 1 according to auxiliary request 2. The request further contains independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a software program, and a method in a real time mobile system, respectively.

X. Claim 1 according to auxiliary request 4 has the same wording as claim 1 according to auxiliary request 2. The request further contains independent claims 3 to 9 defining a computing station, independent claims 10 to 19 defining a mobile terminal, independent claims 21 to 26 defining a user identity module, and independent claim 27 defining a method in a real time mobile system.

XI. Claim 1 according to auxiliary request 5 has the same wording as claim 1 according to auxiliary request 2. The request further contains independent claims 3 to 9 defining a computing station, independent claims 10 to 19 defining a mobile terminal, independent claim 21 defining a software program, and independent claim 27 defining a method in a real time mobile system.

XII. Claim 1 according to auxiliary request 6 has the same wording as claim 1 according to auxiliary request 2. The request further contains independent claims 3 to 9 defining a computing station, independent claims 10 to 19 defining a mobile terminal, and independent claim 20 defining a method in a real time mobile system.

XIII. Claim 1 according to auxiliary request 7 has the same wording as claim 1 according to auxiliary request 2. The request further contains independent claims 3 to 9 defining a computing station, independent claims 10 to 19 defining a mobile terminal, and independent claim 21 defining a software program, and independent claim 27 defining a method in a real time mobile system.

XIV. Claim 1 according to auxiliary request 8 differs from claim 1 of auxiliary request 2 in that paragraphs b and c read as follows (emphasis by the board):

b) "short message service facilities of at least one mobile wireless communication network (4) or a digital cordless communication system (5) and subscriber/user identity module (SIM or the like 10, 39), the system comprising

c) at least one mobile terminal (1, 6, 8, 37, 41) using a module called mobile payment part (10, 21, 39, 42) and comprising means for entering, transmitting, receiving, handling and displaying (11) of information essentially related to"

Furthermore, the expression "and/or" (second occurrence) in paragraph e) of claim 1 of auxiliary request 2 has been replaced by "or" (see VII above).

The request further contains independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a user identity module, and a method in a real time mobile system, respectively.

XV. Claim 1 according to auxiliary request 9 has the same wording as that of auxiliary request 8. The request further contains independent claims 3 to 6 defining a computing station, independent claims 7 to 13 defining a mobile terminal, independent claim 14 defining a method in a real time mobile system, and independent claim 16 defining a user identity module.

XVI. Claim 1 according to auxiliary request 10 differs from claim 1 of auxiliary request 2 in that paragraph c reads as follows (emphasis by the board):

c) at least one mobile terminal (1, 6, 8, 37, 41) using said identity module (10, 21, 39, 42) and in one of its embodiments including a software program called mobile payment part and comprising means for entering, transmitting, receiving, handling and displaying (11) of information essentially related to"

Furthermore, the expression "(SIM or equivalent, 39)" in paragraph b) of claim 1 of auxiliary request 2 now reads "(SIM or equivalent 10, 21, 39, 42)". The expression "another account" in paragraph d2) (second occurrence) reads "to the another account;". Finally, the expression "and/or" in paragraph e) (second occurrence) reads "or".

The request further contains independent claims 3, 4, 8, and 9 defining a computing station, a mobile terminal, a user identity module, and a method in a real time mobile system, respectively.

XVII. Claim 1 according to auxiliary request 11 has the same wording as that of auxiliary request 10. The request further contains independent claims 3 to 6 defining a computing station, independent claims 7 to 13 defining a mobile terminal, independent claim 14 defining a method in a real time mobile system, and independent claim 16 defining a smart card.

XVIII. Regarding admissibility of the appeal, respondent opponent O5 presented essentially the following arguments:

The appellant proprietor had not presented legal or factual reasons why all grounds of revocation were incorrect and should be annulled. More particularly, the statement of grounds of appeal did not contest at all points 24 (charging/debiting said smart card), 37 (means for mobile commerce, banking, trading...), and 38 (combinations and sub-combinations of features not originally disclosed) of the decision. Pursuant to Article lOa, lOb and lOc of the Rules of Procedure of the Boards of Appeal (RPBA) a party had to submit its complete case at the start of the proceedings. Each one of these points alone was a ground for revocation.

XIX. As to the admissibility of the opposition of respondent opponent O5, the appellant proprietor presented essentially the following arguments:

Respondent opponent O5 had attempted to become the proprietor of the opposed patent by suing the appellant proprietor before the District Court of Helsinki. Following G 9/93, which held that the patent proprietor may not oppose his own patent, the opposition of respondent opponent O5 should be rejected as inadmissible.

XX. Regarding patentability, the appellant proprietor presented essentially the following arguments relevant for the present decision:

(a) It was immediately evident to a skilled person reading the application as filed that the "mobile payment part" in claim 1 as granted was equivalent to the Subscriber Identification Module (SIM) used in any normal mobile terminals (GSM telephones) at the priority date of the patent. Since the application as filed in Figure 4, left hand drawing, described a normal portable telephone which includes the inventive mobile payment part, it was evident that a normal mobile terminal cannot have something new permanently incorporated in the terminal, since otherwise it would not be a "normal" terminal. The SIM card, having the features of the present invention, is the only card that the users could have included in the normal mobile terminals (GSM phones) of the years 1994-1995. This is also apparent from the description referring to the terminal shown in the right hand of Figure 4 as "a portable telephone that includes the inventive mobile payment part, a charge slip printer and a user-friendly SIM card reader".

(b) Moreover, the opposition division stated in its decision that according to the original application "the mobile payment part dials" and the "mobile payment part pays". According to the opposition division "the SIM card can not perform the functions of dialling a telephone number or sending information. Therefore, the mobile payment part must be something different than the SIM card."

The arguments of the opposition division were incorrect. First it should be considered that if according to the understanding of the opposition division "the SIM card, at least in the embodiment shown in figure 4 on the right hand side, is not included in the portable terminal whereas the mobile payment part is included" then how was it even possible to send and receive short messages (SMS)? This simply proved that the "mobile payment part" resided in the SIM and that in the embodiment shown in figure 4 on the right hand side the SIM was included; otherwise sending and receiving short messages would not be possible because a user terminal could not have access to the short message service without a SIM.

(c) In the opposed patent the SIM was not used without the terminal. The SIM used the resources of the terminal such as power source (battery), transmitter and receiver etc. in order to transmit and receive short messages. In order to make a call from the telephone number directory of the SIM it had to pass the number to the mobile telephone. The statement "the mobile payment part dials the telephone number of the computing station" did not mean that the mobile payment part could not reside in the SIM because, as mentioned above, the SIM had processing and memory means by which any application could be run. It should be noted that the mobile payment part was a software that could display bills to the user (ie bill presentation and payment) and provided the user with different options such as "Payment amount, Bill ret: etc" and eg OK and Send-options to send the message via the mobile terminal. Such software could reside in the SIM as well as in the mobile terminal, as clearly said in the disclosure of the application as originally filed, page 7, lines 9 to 11, where it is said: "in order to send the payment messages by SMS, the software of SMS installed in the portable terminal can be modified so that it can also handle the payment parameters and/or commands of the inventive mobile payment part".

XXI. Regarding patentability, the respondent opponents presented essentially the following arguments relevant for the present decision:

(a) The application as filed disclosed two embodiments. The first embodiment used a normal mobile phone for carrying out transactions (page 5, line 14 to page 6, line 11; left hand of Figure 4) while the other embodiment used a mobile terminal having a credit card or SIM card reader 36 (page 6, last paragraph; right hand of Figure 4). This credit card or SIM card reader was used for reading the card of a customer. There was no disclosure that a SIM was used at all in the second embodiment, since the mobile terminal could be connected to a cordless network like a DECT which did not use a SIM for identifying subscribers and credit cards at the priority date of the patent were usually only equipped with magnetic strips (cf application as filed, page 4, lines 2 to 6). Therefore, the application as filed did not disclose that the term "mobile payment part" should be equated with SIM.

Furthermore, the application as filed described at page 5, lines 20 to 25, which functionalities the mobile payment part should have. These functionalities were incompatible with those of an SIM, at least at the filing date of the patent.

(b) In claim 1 according to auxiliary requests 8 and 9 the phrase "using said identity module" was replaced by "using a module called mobile payment part". This amendment resulted in the scope of claim 1 being broadened with respect to the claims as granted and was therefore prohibited by Article 123(3) EPC.

(c) The feature "and in one of its embodiments including a software program called mobile payment part" introduced in claim 1 according to auxiliary requests 10 and 11 was only optional and therefore did not change the scope of claim 1. Apart from the fact that the application as filed did not disclose that the mobile payment part was a software program, the objections raised against claim 1 as granted applied to auxiliary requests 10 and 11 as well.

XXII. With respect to the requests for apportionment of costs and reimbursement of the appeal fee, the appellant proprietor presented essentially the following arguments:

(a) The claims as granted had been approved by the examining division without any objections. Therefore, if the opposition division found that the claims as granted did not comply with Article 123(2) EPC then the examining division should not have granted the patent but should have invited the applicant to overcome the objections under Article 123(2) EPC. On grant of the patent the appellant proprietor had had to translate the patent specification at his own expense into several other languages.

(b) In the decision under appeal, the opposition division had interpreted Article 123(2) EPC in a very broad way contrary to the instructions given in the Guidelines.

(c) Although the appellant proprietor had been given the possibility to speak at the oral proceedings before the opposition division, the opposition division had neither listened to nor analysed the arguments submitted by the proprietor.

(d) The oppositions had no admissible grounds, but had caused extra costs to the appellant proprietor. In particular, the opposition division had made several statements in the communication with the summons to oral proceedings which were not correct, such as the statement that exclusive short message communication without any voice operation was not an explicit feature of granted claim 1. However, as proven by the proprietor in his written submissions and at the oral proceeding before the opposition division, the granted claim 1 and the rest of the claims were exclusively based on short message communication without any voice operation. This issue had been the subject of examination and in the applicant's statement attached to his original application this matter had been mentioned. Otherwise, the EPO could not have granted the patent. Therefore, this important feature of the invention had been objected to by the opponents and the opposition division without any basis.

(e) The opponents had abused the proceedings by submitting irrelevant documents. For example, the opponents, as well as the opposition division, had contended that document D2 (US 5 221 830A) was an important cited publication allegedly disclosing a real time short message system. At the oral proceedings, however, the opponents had contradicted themselves in arguing that the short message communication of mobile communication would not be considered a real-time solution. This simply proved that opponents had submitted irrelevant documents.

(f) The late-filed documents cited by opponents O1 and O5 in the opposition procedure has caused extra work and costs for the appellant proprietor, taking into account that the opposition division had not refused to admit the late-filed documents of opponents O1 and O5 despite the proprietor's request. The submission of new documents amounted in effect to a submission of fresh grounds for opposition. Such grounds could be considered in the proceedings only with the approval of the proprietor (G 10/91). The late-filed documents by opponents O1 and O5 were not even a bona fide attempt to overcome any objection raised, because after the appellant proprietor had studied these documents he realised that the late-filed documents brought nothing new which had not been taken into consideration in the examination and opposition proceedings.