CABINET CHAILLOT

T 0116/18 - post-published evidence

Post-published evidence, G 2/21, technical effect, technical teaching

T 0116/18
This decision concerns the appeal filed by the opponent (appellant) against the opposition division's decision to reject the opposition against European patent No. 2 484 209.
The board issued a written interlocutory decision referring questions to the Enlarged Board of Appeal, which led to decision G 2/21.
Claim 1 refers to an insecticide composition which comprises thiamethoxam and one or more kinds of compounds selected from a compound represented by the formula Ia.
The patent in suit acknowledges that the compounds recited in claim 1, i.e. thiamethoxam and the compound of formula Ia, were already known for their insecticidal activity. According to the patent, mixtures of thiamethoxam and a compound of formula Ia can produce insecticidal activity which is greater than that which would have been expected based on their respective individual activities, i.e. a synergistic effect.
The patent contains five test examples. They evaluate the presence/absence of synergy between two insecticides, i.e. of an insecticide combination, contained in the same composition.
In its decision to reject the opposition, the opposition division based its assessment of inventive step, inter alia, on the respondent's post-published evidence D21, which it accepted as proof of a synergistic effect of insecticide combinations according to claim 1 as granted.
The appellant's post-published evidence D23 demonstrated that the synergistic effect observed in test examples was not achieved across its entire breadth. Therefore, when D23, but not the respondent's post-published evidence D21, were taken into account, the objective technical problem would have been to provide an alternative insecticide composition. The solution to this objective technical problem would have been obvious based on D4 alone.
The board concluded that, if D23 could be taken into account, the allowability of the main request depended on whether post-published evidence D21, filed as proof of a synergistic effect of an insecticide composition according to claim 1, could be taken into consideration. As regards the standard to apply in considering D21, the board referred questions to the Enlarged Board.
The following answers given by the Enlarged Board address these two issues (G 2/21, order):
1. Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.
2. A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.
Interpretation of G 2/21:
It can be concluded from the Enlarged Board decision that patent applicants and proprietors should not be able to invoke any technical effect at will. Instead, the focus on the application as filed and the filing date (G 2/21) is intended to prevent the filing of applications directed purely to speculative inventions made only after the filing date.
The requirement(s) established has (have) to be looked at with the eyes of the skilled person "having the common general knowledge in mind, and based on the application as originally filed". The common general knowledge must be that existing on the filing date of the application.
Order no. 2 requires that, for a patent applicant or proprietor to be able to rely on a purported technical effect for inventive step, the skilled person would derive said effect as being (i) encompassed by the technical teaching and (ii) embodied by the same originally disclosed invention.
For requirement (i) of order no. 2 to be met, the purported technical effect together with the claimed subject-matter need only be conceptually comprised by the broadest technical teaching of the application as filed. This means that said effect need not be literally disclosed in it by way of a positive verbal statement. Instead, it may be sufficient that the skilled person, having the common general knowledge in mind, and based on the application as filed, recognizes that said effect is necessarily relevant to the claimed subject-matter.
As regards requirement (ii) of order no. 2, the board's conclusion is thus the following: requirement (ii) is met unless the skilled person would have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter. For requirement (ii) to be satisfied, experimental proof of the purported technical effect or a positive verbal statement is not necessarily required in the application as filed.
Application of the order to the present case:
In the present case, the purported technical effect is the synergistic activity against Chilo suppressalis as shown in post-published evidence D21 for a specific composition according to claim 1 as granted. This effect is relied on for the subject-matter of claim 1 as granted.
Requirement (i), "encompassed by the technical teaching": the purported technical effect is the synergistic activity against Chilo suppressalis and it is relied on for the subject-matter of claim 1 as granted.
Requirement (ii), "embodied by the same originally disclosed invention": test example 3-a demonstrates a synergistic effect against Chilo suppressalis for a compound of formula Ia in combination with clothianidin. Clothianidin and thiamethoxam are structurally very similar. Therefore, the skilled person would have no legitimate reason to doubt that the synergistic effect against Chilo suppressalis would be maintained when replacing clothianidin with thiamethoxam in the insecticide combination in test example 3-a.
The board acknowledges that there might be a legitimate reason to doubt that the specific purported technical effect can be achieved if this effect is irreconcilable with the common general knowledge and that this may lead to the conclusion that requirement (ii) is not satisfied; however, the appellant has not demonstrated that the technical effect is irreconcilable with the common general knowledge.
It is in the very nature of the present invention, which is based on the combination of two insecticides and their effect on insects, that the patent proprietor cannot be expected to have provided proof in the application as filed of the synergistic insecticidal effect for every conceivable combination of insecticides against every conceivable insect species.
Based on the test examples of the application as filed, the skilled person would have no legitimate reason to doubt that the purported technical effect can be achieved with the subject-matter of claim 1 as granted. The purported technical effect is embodied by the same originally disclosed invention.
It can be concluded that the respondent may rely on the purported technical effect based on the application as filed.
The synergistic effect observed in example 4 of D21 against the insect species Chilo suppressalis can be acknowledged to be achieved over the entire breadth of claim 1 provided D21 can be taken into account.
The appeal is dismissed.

 

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