T 0231/85 (Triazole derivates) of 8.12.1986

Summary of Facts and Submissions

I. European patent application No. 81 101 742.5 (Publication No. 37 468), filed on 10 March 1981 and claiming the priority of a German application of 24 March 1980, was refused by Examining Division 001 in a decision dated 2 July 1985. The refusal was made on the basis of four claims which, in abridged form, read as follows: "1. Method of controlling fungi, characterised in that a triazole derivative with the general formula ..., in which ..., or salts or metallic complex compounds thereof, are allowed to act on these fungi.

2. Method of preventive fungus control, characterised in that a triazole derivative as claimed in Claim 1 is allowed to act on objects threatened by fungal infestation.

3. Method as claimed in Claim 1, characterised in that ... (specific compound A) ... is the triazole derivative used.

4. Method as claimed in Claim 1, characterised in that ... (specific compound B) ... is the triazole derivative used."

II. The application was refused with reference to Article 54(3) EPC as lacking novelty when compared with the earlier European patent application EP-A-19 762 (1), which did not itself form part of the published prior art. Citation (1) described a method of regulating plant growth by means of the same compounds, which according to the invention were to be used in a method of fungus control. If in the case of two claims - as here - a difference exists solely as regards the stated purpose, such statement of purpose implying the same technical features, then the subject-matters of such claims shall be regarded as being the same (page 4, first paragraph of the contested decision).

III. On 22 May 1985 the applicants additionally submitted two alternative requests: the first was directed to the grant of two method claims corresponding to Claims 3 and 4 of the main request; the second was directed to the grant of a patent for the use of a triazole derivative for the manufacture of a fungicide, characterised by the use of compounds as specified in Claim 1 of the main request (Claim 1) or of compounds A and B, as defined in Claims 3 and 4 of the main request (Claim 2 or 3). These alternative requests were not granted in the Decision of 2 July 1985 since, as can be seen from the record of a telephone conversation on 8 July 1985, they came to the notice of the Examining Division only after the decision had been given. From the aforementioned record it can also be seen that the Examining Division considered the first alternative request to be grantable, but was not prepared to rectify its decision in accordance with Art. 109 EPC, since the applicants still continued to adhere to their main request.

IV. The applicants appealed against the Examining Division's decision on 13 July 1985, at the same time paying the prescribed fee and submitting their statement of grounds. This statement of ground refers to the Enlarged Board of Appeal's decision Gr 01/83 of 5 December 1984 (OJ EPO 1985, 60), from which it essentially concludes that if a second pharmaceutical use of a substance or mixture of substances could be deemed novel, despite there being a known first use, then a second agricultural use could also be recognised as being novel. The main and alternative requests were for the time being pursued further without amendment.

V. On 7 May 1986 the appellants (applicants) additionally submitted a third alternative request, Claim 1 of which was directed at the use of the triazole derivatives defined in Claim 1 of the main request for controlling fungi; Claim 2 of alternative request 3 was directed - in an alternative form - at the corresponding use of the specific compounds A and B referred to in Claims 3 and 4 of the main request.

VI. At the Board's suggestion to make the alternative request, as the most far-reaching one, the main request, the appellants - taking account of all previous sets of claims in the form of alternative claims - finally submitted as their new main request the following two claims (given in abridged form): "1. Use of a triazole derivative of the general formula ... (as in the previous main request) ... or salts or metallic complex compounds thereof for controlling fungi and for preventive fungus control.

2. Use of ... (compound A or B) ... as defined in Claim 1." Grant of a patent on the basis of these claims is requested.

Reasons for the Decision

3. The disputed decision is based on (1) as the only relevant state of the art. In that document, the triazole derivatives as such proposed in Claim 1 of the present application for use as fungicides are described, as also is their use as agents for influencing plant growth. Treatment is effected in the same way as in the subject-matter of the application, e.g. by spraying or dusting useful plants or by treating their seeds (cf. (1), page 16, and the present application, page 13, last paragraph).

4. In the light of this, the department of first instance considered that the method for controlling fungi claimed at the time, using the triazole derivatives concerned, was no longer novel, the method being essentially the same in content as in the use now being claimed for the derivatives. It evidently reached this view - although this is not made absolutely clear in the contested decision - on the basis of the consideration that, under the state of the art described in (1) and also in accordance with the application, plants - especially useful plants like cereals - are treated with the triazole compounds in the same way so that, irrespective of the effect sought, the same actual effect must always be achieved; for if one treats a plant with an agent that acts both as a growth regulator and a fungicide, a plant treated in accordance with (1) for the purpose of growth regulation will also be protected - possibly unnoticed - against fungal infestation, just as the growth of a plant will in fact be influenced even if it is treated with the same agent for the sole purpose of protecting it against fungi. The plant and the fungus simply do not "know" what man intends to do with them.

5. If, as in the Claim 1 originally submitted, fungicidal agents as such were to be claimed, then compared with (1) they were in fact lacking in novelty; for in the general form in form in which they were claimed, with their technical (structural) characteristics, such fungicidal agents do not differ at all from the growth-regulating agents disclosed in (1). This does not, however, hold true for the use currently being claimed, as becomes clear if the invention is looked at as a solution to a problem:

6. If (1) is taken as the basis for the state of the art, then the task of the invention can be seen to be to find for the triazole compounds defined in (1) a further usable property in addition to the ones specified therein. According to the claims, this problem is solved by their proposed use as fungicides - incidentally, contrary to page 4, lines 12 to 13 of the contested decision, not only for the protection of plants, but also of other substrates (see page 14, line 29, to page 15, line 8). Even if one disregards these other substrates, the technical teaching of the application - use for controlling fungi or corresponding preventive treatment of useful plants against fungal infection - still differs from that described in (1) - treatment of plants in order to influence their growth. It is of course true that any practice of the teaching in (1) must also result in an unintentional and unnoticed protective effect against fungi; however, to achieve this protective effect deliberately and purposefully, i.e. to treat just those plants (or also other objects; see above) that are affected by harmful fungi or threaten to become affected was taught for the first time in the application. Thus the fact of a substance being known cannot preclude the novelty of a hitherto unknown use of that substance, even if the new use does not require any technical realisation other than that for a hitherto known use of the same substance. The claimed use is therefore novel.

7. Also, in the Board's view, method claim 1 forming the basis of the contested decision, and of course even more so the method claims with their limitation of substances as contained in alternative request 1 of 22 May 1985, satisfied the patent requirement of novelty when compared with (1).

8. ... (Inventive step)

9. Also, a patent still cannot be granted, as there is no description adapted to the current claims. The application is therefore being referred back to the Examining Division.

10. No reimbursement of the appeal fee was requested by the appellants, but the Board has nevertheless examined this question on its own initiative and duly reached the following conclusion: The decision given on 2 July 1985 takes no account of two alternative requests which had been in the Office since 22 May 1985. The Examining Division cannot itself be held responsible for the fact that these alternative requests did not come to its notice in time, but this failing does have to be attributed to the Office, which must be organised in such a way that incoming mail is promptly forwarded to the department competent to reach the decision. No-one involved in proceedings before the European Patent Office should have to reckon with a forwarding time within the Office of around six weeks; on the contrary, the parties concerned in a matter which is up for an early decision must be able to rely on material evidence being forwarded to the deciding authority within a few days of receipt. It is intolerable if - as here -almost six weeks elapse before the Examining Division gets to know about requests received from the applicants. Failure to take such requests into consideration which is a result of a delay within the Office and not attributable to the parties to the proceedings constitutes a substantial procedural violation within the meaning of Rule 67 EPC and calls for reimbursement of the appeal fee. In the present case, such reimbursement is only right and proper since not only the sets of claims newly submitted on 30 October 1986, but also at least one of the sets of claims available to the Office on the date of the decision being contested would have eliminated lack of novelty as the reason for rejection. Moreover, under Article 109 EPC, the Examining Division should have rectified its decision, continued the examination proceedings and ordered reimbursement of the appeal fee as soon as it became aware of the existence of an appeal which was allowable and which was, in its own view, justifiable in any case within the scope of alternative request 1 at that time, and aware also of the procedural violation which had occurred.

ORDER

For these reasons, it is decided that:

1. The contested decision is set aside.

2. The matter is referred back to the Examining Division for continuation of the examination proceedings on the basis of the claims of 30 October 1986.

3. Reimbursement of the appeal fee is ordered.