T 0939/92 - Technical effect "over the whole area claimed" - Triazoles/AGREVO - #14

Citation rank: 14
No. of citations: 198

T 939/92 ("AGREVO") looked at the relationship between the contribution to the art and scope of claims and its bearing on the assessment of inventive step.

Claim 1 in the underlying examination case related to broadly defined triazole compounds. It was asserted by the applicant that the claimed triazole compounds had herbicidal activity. The Examining Division had refused the application for lack of support (Art. 84). In particular, they were of the opinion that the scope of the claims did not represent a reasonable generalisation of the examples provided in the description.

Also the Appeal Board found that the claims were unreasonably broad. They also questioned that the application documents contained sufficient internal evidence to render it credible that all claimed compounds would have the stated herbicidal activity. They also agreed with the Examining Division that the claim feature defining a residue "R3" as "optionally substituted phenyl" meant that the phenyl of R3 could be "substituted by absolutely anything" (point 6 of the decision under appeal).

While the Examining Division concluded that the claim lacked support (Art. 84), the Board stated that it does not follow from Article 84 EPC that a claim is objectionable simply because it is "unreasonably broad" (cf. Headnote I). The Board found that the claim was supported by the description, but saw problems regarding inventive step. In this context, they stated:

"2.4.2 The reason for this is that it has for long been a generally accepted legal principle that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art (see T 409/91, OJ EPO 1994, 653 , reasons Nos. 3.3. and 3.4, and T 435/91, OJ EPO 1995, 188, reasons Nos. 2.2.1 and 2.2.2). Now, whereas in both the above decisions this general legal principle was applied in relation to the extent of the patent protection that was justified by reference to the requirements of Articles 83 and 84 EPC, the same legal principle also governs the decision that is required to be made under Article 56 EPC, for everything falling within a valid claim has to be inventive. If this is not the case, the claim must be amended so as to exclude obvious subject-matter in order to justify the monopoly."

In the case of the triazole compounds of claim 1, the applicant could only demonstrate herbicidal activity of some of the compounds falling under claim 1. In all of those compounds for which herbicidal activity was shown, R3 was a phenyl substituted by halogen atoms or methyl groups. On the basis of this evidence, the Board was not satisfied that substantially all compounds now being claimed are likely to be herbicidally active (point 2.7 of the reasons).

The Board concluded that, because it was not demonstrated that the technical effect, on which the invention relied, existed over the whole area claimed, claim 1 lacked inventive step. (This reasoning is now often used by opponents in chemical opposition cases, and commonly referred to as the "Agrevo" argument.)

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Headnote:

1. If a claim concerns a group of chemical compounds per se, an objection of lack of support by the description pursuant to Article 84 EPC cannot properly be raised for the sole reason that the description does not contain sufficient information in order to make it credible that an alleged technical effect (which is not, however, a part of the definition of the claimed compounds) is obtained by all the compounds claimed (see Reasons No. 2.2.2).
2. The question as to whether or not such a technical effect is achieved by all the chemical compounds covered by such a claim may properly arise under Article 56 EPC, if this technical effect turns out to be the sole reason for the alleged inventiveness of these compounds (Reasons Nos. 2.4 to 2.6).

The full text of the decision can be accessed here.