7.3. Random techniques and elements of surprise

In T 737/96 the board was of the opinion that it was not appropriate to attempt to evaluate the expectation of success of a random technique such as mutagenesis where results depended on chance events. This was because the skilled person knew that, unless a specific selection method could be developed, which was not the case in the patent in suit, perseverance and chance played a key role in achieving success, as no form of control could be exerted over the mutation events. Under these circumstances, as in a lottery game, the expectation of success always ranged irrationally from nil to high, so it could not be evaluated in a rational manner based on technical facts (see also T 645/02, T 694/92, OJ 1997, 408).

In T 1231/01 the board held that the isolation of a specific virus strain useful for a defined purpose was a technique of random nature. The skilled person trying to solve this problem, having from nil to high expectations, had to expect a large number of failed attempts. In such technical circumstances, it was the actual isolation of a virus indeed having the desired characteristics which was surprising. The board came to the decision that the isolation of the specific viruses of claim 1, which could efficaciously be used as vaccines against PRRS, contained elements of surprise which justified the recognition of an inventive step.

In T 775/08 the board held that in line with the above case law concerning the use of random methods, the actual isolation in the case in hand of a glyphosate tolerant alfalfa plant having the desired properties and containing elements of surprise might justify the recognition of an inventive step. The question was whether the claimed glyphosate tolerant alfalfa event contained these elements of surprise or not. See also T 2239/08 and T 915/10. In T 3103/19 the board found that there were no elements of surprise in the sense outlined in the above case law and thus the relevant subject-matter did not involve an inventive step.