Introduction
The EPO Technical Board of Appeal decision T 0116/18, issued on 28 July 2023, explores the legal boundaries for the use of post-published evidence to establish inventive step, particularly concerning the demonstration of synergistic effects in chemical compositions. This decision provides clarity on the interpretation of order no. 2 from G 2/21 and its application to inventive step assessments. The Board’s decision to uphold the patent in the face of opposition underscores important lessons for patent practitioners regarding the admissibility and impact of post-published data.
Summary of the Invention
The patent in question held by Sumitomo Chemical Company, Limited, relates to insecticide compositions that combine thiamethoxam with one or more additional insecticidal compounds selected from a specific chemical group. The invention claims that this combination results in a synergistic effect, enhancing the insecticidal activity against certain pests beyond what would be expected from the individual activities of the components.
Summary of the Board of Appeal Decision
Arguments by the Opponent (Syngenta Limited):The opponent, Syngenta Limited, challenged the patent on multiple grounds, including lack of inventive step under Article 56 EPC. A key point of contention was the reliance on post-published evidence (document D21) submitted by the patentee to prove the claimed synergistic effect. Syngenta argued that this effect should be disregarded because it was not plausibly demonstrated in the original patent application. They submitted their own post-published evidence (D23) which suggested that the claimed synergistic effect was not consistently observed across all insect species.
Arguments by the Patentee (Sumitomo Chemical Company, Limited):The patentee defended the validity of their patent by relying on the post-published evidence D21, arguing that the synergistic effect was plausible based on the teachings of the original application. They emphasized that the combination of thiamethoxam with the other insecticidal compounds listed in the patent consistently produced a synergistic effect, particularly against the pest Chilo suppressalis. The patentee also contested the admissibility of the opponent's evidence (D23), which purported to refute the synergistic effect.
Board’s Decision:The Board upheld the patent, finding that the post-published evidence provided by the patentee could be considered in assessing the inventive step. The Board applied the principles set out in G 2/21, concluding that the synergistic effect was derivable from the original disclosure and could be legitimately supported by post-published evidence. The Board emphasized that both requirements set out in G 2/21's order no. 2—encompassment by the technical teaching and embodiment by the originally disclosed invention—were satisfied. The Board dismissed the opponent's challenge, asserting that the evidence presented did not sufficiently undermine the claimed synergistic effect.
Lessons to be learned
Post-Published Evidence Can Support Inventive Step:This decision reaffirms that post-published evidence can be used to substantiate a technical effect, such as synergy, provided that the effect is plausibly derivable from the original application. Practitioners should ensure that the technical teaching of the application as filed provides a credible basis for any effects that may later be supported by additional data.
Interpretation of G 2/21:The Board’s application of G 2/21 highlights the two critical criteria for relying on post-published evidence: the effect must be encompassed by the technical teaching of the application, and it must be embodied by the originally disclosed invention. These criteria must be satisfied cumulatively, and their application will depend on the specific facts of each case.
Strategic Use of Experimental Data:Patent applicants should consider including as much supportive experimental data as possible within the original application to strengthen the case for inventive step. While post-published evidence can be useful, its admissibility depends on the strength and clarity of the original disclosure.
Challenges for Opponents:For opponents, this decision illustrates the difficulty of overturning a patent based on inventive step when the patentee successfully leverages post-published evidence. Opponents must be prepared to present compelling counter-evidence and arguments that directly address the plausibility of the effect as initially disclosed.
Link to the case : HERE
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LegalDisclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for rofessional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.