Résumé de EPC2000 Art 056 pour la décision T0605/20 du 11.11.2022

In T 605/20 D3 represented the closest prior art. The difference between the composition of claim 1 as granted and the most pertinent exemplified compositions in document D3 relied upon by the appellant-opponents as starting points in the prior art was not in dispute and concerned the presence of propylene glycol in the composition claimed in the patent instead of the isotonic agents mannitol or glycerol in the compositions described in document D3. Contrary to the arguments from the appellant-opponents the board found that the undesired phenomena observed in the patent with the use of the compositions comprising mannitol or glycerol of document D3 would not inevitably manifest themselves upon the practical implementation of the teaching of document D3. It held that the recognition of the relevance of these phenomena should therefore be considered to form part of the technical contribution described in the patent. A specific reference in the formulation of the objective technical problem to the avoidance of these phenomena would risk to unfairly direct development towards the claimed solution, which was not permissible, as it would introduce aspects of hindsight in the assessment of obviousness of the solution (see in particular T 800/91). The appellant-opponents objected that the patent merely presented an allegation regarding the stability of compositions comprising propylene glycol as defined in the claims as granted. The board observed, however, that the report in the patent on the maintained stability of the compositions comprising propylene glycol concerned a verifiable observation rather than merely some allegation. The maintained stability of the compositions comprising propylene glycol did not imply an actual improvement with respect to the compositions comprising mannitol or glycerol as described in document D3. However, the board found no reason why the formulation of the objective technical problem could not refer to the purpose of maintaining the stability of the compositions. In light of the above the board concluded that the problem to be solved starting from the mannitol or the glycerol based compositions of document D3 may be formulated as the provision of liraglutide containing compositions having optimized manufacturability and usability whilst maintaining stability. Assessing the solution, the board found D3 itself provided no suggestion towards any advantage from the use of propylene glycol over mannitol or glycerol. On the contrary, document D3 recommended mannitol and glycerol as the preferred isotonic ingredients. It concluded that as the solution to the identified objective technical problem, the replacement of the isotonic agents mannitol and glycerol in the compositions of document D3 by propylene glycol was therefore not obvious to the skilled person. The board did not recognise any divergence between T 1087/15 and T 800/91 as argued by the appellant-opponents. In T 1087/15 it was considered that knowledge of the claimed invention was indispensable in order to formulate the objective technical problem irrespective of the choice of the starting point in the prior art. The board agreed; knowledge of the claimed invention was inevitable in order to be able to analyse it for compliance with the requirement of inventive step. It was precisely for that reason the technical problem underlying a claimed invention had to be formulated, according to the established jurisprudence, in such a way that it did not contain pointers to the solution or partially anticipate the solution. The assessment of the solution for obviousness in light of the prior art would otherwise be unduly influenced by an ex post facto view on the matter. The board stated it was in line with this jurisprudence that according to T 800/91 the technical problem should not be tendentiously formulated in a way that unfairly directs development towards the claimed solution. The board concluded that the patent as granted also met the requirement of inventive step and ordered that the appeals be dismissed.