Résumé de EPC2000 Art 056 pour la décision T0318/22 du 09.09.2024

In T 318/22 the patent comprised data demonstrating that compounds falling within the scope of claim 1 possessed herbicidal activity. That the herbicidal activity was improved compared to structurally close compounds of D7 was demonstrated in the post-filed tests of D9 and D10. The appellant (opponent) argued that the data in the patent was not sufficient to render the alleged herbicidal effect credible across the scope of the claim and that the data in D9 and D10 should not be taken into account in view of G 2/21. Even if taken into account, the appellant argued, the data in D9 and D10 for two compounds was not sufficient to extrapolate the effect across the scope of the claim. The board found that the application as filed comprised data demonstrating that a range of compounds falling within the claimed scope possessed herbicidal activity against various plant species, and that the examples of the application as filed adequately demonstrated that herbicidal activity was maintained with variation in the substitution pattern around the periphery. Hence, it was credible on the basis of the application as filed that the claimed compounds possessed the alleged herbicidal activity. The board found that the situation in T 939/92 - which the appellant sought to rely on - was not relevant to the present case. As to the question whether D9 and D10 could be taken into account in view of G 2/21, the board noted as set out above that the technical effect upon which the respondent relied was explicitly mentioned in and rendered credible by the application as filed. Hence, the requirement in G 2/21 that the skilled person would derive the technical effect as being "encompassed by the technical teaching" and "embodied by the same originally disclosed invention" was met. The board further found that referral T 116/18 and decision G 2/21 appeared to be irrelevant to the present case, since the question to be answered in those cases was whether post- published data in relation to a particular technical effect could be relied on for inventive step when evidence for said effect relied exclusively on said post-published data (see question 1 posed by the referring board in T 116/18). This did not correspond to the present situation. The board concluded that the data in D9 and D10 and in the application as filed demonstrated that the technical effect of improved herbicidal activity could be attributed to the distinguishing features over the structurally closest compounds disclosed in D7. While this did not constitute absolute proof that all claimed compounds differing from the equivalent compound of D7 only in the distinguishing features would demonstrate the same improvement, this conclusion was rendered credible by the test data. In the absence of any evidence to the contrary, the board therefore accepted that the effect of improved herbicidal activity was achieved over substantially the whole of the claimed scope. Hence, on the basis of referral T 116/18 and G 2/21, D9 and D10 could be relied on in the assessment of inventive step for the claimed subject-matter. Consequently, the board held the objective technical problem underlying claim 1 was as formulated by the respondent, namely the provision of compounds having improved herbicidal activity against a variety of weeds. Noting that the appellant had not submitted any arguments according to which inventive step would be lacking if the objective technical problem were to be formulated as set out above, the board concluded that the subject-matter of claim 1 involves an inventive step pursuant to Art. 56 EPC.