Résumé de EPC2000 Art 056 pour la décision T0887/21 du 13.07.2023

In T 887/21 the patent in suit sought to provide a method for the prevention of secondary infections following viral infections such as influenza, which did not rely on the use of antibiotics and which may be conveniently and safely administered. The respondent (patent proprietor) argued that, in view of the mechanistic concept set out in the application as filed and the experimental data presented in the (post-filed) test report D15, the objective technical problem should be defined as the provision of an improved composition for use in the prevention of secondary infections following a viral infection characterised by neuraminidase activity. The board reached a different conclusion. The application as filed contained no experimental data. The mechanistic concept that the respondent relied on was a mere assertion by way of a hypothesis and was not backed up by any corroborative data. Thus, the board found the information provided in the application as filed did not amount to evidence of an "improvement" in comparison with the starting point in the prior art (i.e. D16). The respondent had argued that the fact that the application as filed included a mechanistic concept at least provided justification for submitting additional evidence with D15. However, the test described in D15 related to inhibition of Salmonella typhimurium (known for causing gastroenteritis) in a culture medium, without the involvement of epithelial host cells. This was not corroborative evidence of the concept taught in the application as filed, but entirely new information both on the mechanism of action and the pathogenic organism involved. Firstly, D15 related to a presumed synergistic effect that was independent of epithelial binding. This was not derivable from the application as filed. Contrary to the respondent's view, the fact that a mechanistic concept of the antiadhesive activity of oligosaccharides was set out in the application as filed could not justify introducing new experimental data that was manifestly based on a different mechanism of action. Secondly, the application as filed mentioned only once, in a general way, that the infections which may be prevented, apart from infections of the respiratory tract, also included infections of the gastrointestinal tract. An invention cannot be based solely on knowledge made available only after the effective date. In the case in hand, the board found it could not have been derived from the application as filed that the envisaged compositions were supposed to inhibit Salmonellae, and this independently of any antiadherence mechanism. In the terms used in decision G 2/21, in these circumstances, the board found that the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not have derived the technical effect examined in D15 and relied on by the respondent for inventive step as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The board elaborated that it was not sufficient that a technical effect could be achieved by a composition which in terms of technical features corresponded to compositions in the application as filed. In order to be taken into account in the formulation of the objective technical problem, the alleged technical effect that was supposedly shown by the post-filed evidence (in the present case, the inhibition of Salmonellae outside the context of epithelial adherence) also had to be encompassed by the technical teaching of the application as filed, i.e. the technical effect in question had to in the first place be disclosed or be at least derivable from the technical teaching of the application documents (G 2/21, point 72 of the Reasons). Already this first requirement was not met in the case in hand. For these reasons, the improvement alleged by the respondent could not be taken into account in the formulation of the objective technical problem.