T 0208/88 (Growth regulation) of 28.2.1990

Summary of Facts and Submissions

I. European patent application No. 80 106 574.9 (publication No. 28 755), filed on 25 October 1980 and claiming the priority of a German application of 7 November 1979, was refused by Examining Division 001 in a decision dated 25 November 1987 and amended on 7 January 1988. The refusal related to four claims filed on 30 September 1981, the first of which (in abridged form) reads as follows:

"Use of pyrimidine butanol derivatives of the formula ......... (i) .............. to regulate plant growth."

II. Consciously disregarding the Board's decision T 231/85 dated 8 December 1986 ("Triazole derivatives/BASF", OJ EPO 1989, 74), the department of first instance justified its own decision by citing lack of novelty vis-à-vis

(1) EP-A-1 399.

(In proceedings before the Examining Division,

(2) US-A-3 869 459

also played a part, although not in connection with novelty.) Document (1) had disclosed the pyrimidine butanol derivatives (i) and their use in controlling fungi on plants, and the recognition of new properties of an active substance could justify a use claim only if that claim furnished the skilled person with a new technical teaching concerning the substance's conditions of use, but not if the only novel feature of the claim was the different use itself.

III. The applicants (appellants) appealed against the Examining Division's decision, paying the prescribed fee, on 16 January 1988. They requested that the contested decision be set aside and a patent granted on the basis of the current claims; alternatively, that oral proceedings be called and the matter referred to the Enlarged Board of Appeal; and further that the appeal fee be reimbursed. The essential point put forward in the grounds for appeal received on 19 March 1988 was that, in the particular case of a use claim such as the one under consideration, the use, being a technical feature, formed part of the teaching of the invention and thus constituted evidence of novelty. Since use inventions were patentable under national law as well as under the EPC, it was also in the interests of harmonisation that they should be protected. Decision G 1/83 did not preclude this. The claimed teaching could not have been inferred from the prior art and was therefore new (cf. the earlier ruling in case T 231/85).

IV. On 20 July 1988 the Board accordingly delivered an interlocutory decision ruling the appeal admissible, and referred the following point of law to the Enlarged Board of Appeal: "Is a claim to the use of a chemical compound or class of compounds for a particular non-medical purpose novel within the meaning of Article 54 EPC, having regard to prior art which discloses the use of that compound (class of compounds) for a different non-medical purpose, if the two teachings are carried out by identical technical means and the only novel feature in the claim is the use itself?"

V. The Enlarged Board ruled as follows in its decision G 6/88 of 11 December 1989:

"A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public".

Reasons for the Decision

1. Claim 1 as currently worded relates to the use of plant-growth regulating compounds of formula (i) which are known as such. The Enlarged Board's ruling means that its subject-matter is new within the meaning of Article 54 EPC provided that:

(i) the technical effect in which the claimed use resides is described in the application, which of course means in the original documents;

(ii) this technical effect was not made available to the public before the relevant priority date of the application at issue. As the Enlarged Board pointed out, the question on which this second condition turns will always be one of fact.

2. The first condition has unquestionably been met: see, for example, the original Claim 1 beginning "Plant-growth regulating agent", followed later by a definition of the agent's active substances identical to that in Claim 1 as now worded. It goes without saying that the technical effect, whose disclosure the Enlarged Board has ruled to be the crux of the matter, is indicated just as clearly in the original Claim 1 relating to the agent as such as in the current use claim. Furthermore, the first sentence of the original description specifically mentions a "use", while paragraph 1 on page 2 refers to the compounds' "strong growth-regulating properties".

3. The other matter to be clarified for the purposes of a ruling on novelty is whether the effect of the substances (i) as growth regulators might have been available to the public before the priority date of the application at issue.

3.1 The growth-regulating effect is not "available" in this sense if the cultures being treated actually underwent growth regulation - as must have been the case, even if it went unnoticed - when the compounds (i) for controlling fungi were put to the use known from (1). After all, decision G 6/88 stresses that the question of inherency does not arise under Article 54 EPC (point 8, in particular 8.1 and 8.2). On the contrary, an effect not previously described, but actually occurring during the execution of a known teaching and intended as the basis of a use invention, becomes available to the public only when revealed so clearly during such execution as to disclose the invention's essential character, at least potentially, to an unlimited number of skilled persons. In the present case, the growth-regulating effect of the compounds (i) would have become available as a technical teaching prejudicial to novelty only if the cultures treated with (i) for the purpose of fungus control had clearly and unmistakably exhibited an abnormal growth process and there had been a definite causal connection between the treatment and this growth process.

3.2 The Board has no criterion for assessing whether an immediately conspicuous abnormal growth process was bound to occur as an unintended consequence of anti-fungal treatment of cultures with compound (i). But if a skilled person unaware of the invention had in fact observed a culture exhibiting an uncharacteristic growth process, he could have sought the cause - had he reflected on the matter at all - among various factors such as the particular properties of the soil, the time or type of cultivation, climate, fertilisation, etc. The public was thus unable - either by reading (1) or by executing its teaching - clearly to identify the essential character of the claimed invention, namely the growth-regulating effect of the compounds (i). 3.3 As the Board is unaware of any other prior art which might anticipate the application's subject-matter, the latter must be regarded as new.

4. On inventive step, the contested decision made brief but unequivocal reference (page 5, paragraph 4) to the comparative tests filed on 29 February 1984 in connection with (2), acknowledging them in respect of "the subject-matter of the application in so far as it is new".

4.1 This statement is obviously meant to be construed as follows. Document (2) was taken as the closest prior art, an assumption justified by the completely different problem posed in (1). The problem in the present case - to indicate improved growth regulators - had been stated in the submission accompanying the comparative tests. Achieving this by using the compounds (i) as proposed was acknowledged in the light of the comparative tests to be plausible and not suggested by (2). In this respect the Board sees no reason to dissent from the opinion of the department of first instance. The only remaining question is whether a different conclusion might be reached by considering (1) - regarded by the department of first instance as prejudicial to novelty - in connection with inventive step.

4.2 In the Board's view, it would not. It is not clear how (1) alone - which mentions only the fungicidal use of the compounds (i) - could have been understood as indicating that such compounds were effective as growth regulators or even as better growth regulators than the compounds in (2); nor why it should have been obvious to pick out the fungicides known from (1) in the search for better growth regulators than those described in (2).

4.3 Accordingly, the subject-matter of Claim 1 involves an inventive step.

5. Each of Claims 2 to 4 relates to the use, as a growth regulator, of one of the individual compounds covered by the general formula (i) in Claim 1. Those claims are therefore patentable by virtue of Claim 1.

6. Under Rule 67 EPC, the appeal fee could be reimbursed as requested only if a substantial procedural violation had occurred in proceedings before the Examining Division. No such violation has been demonstrated by the appellants, however, nor is one apparent to the Board. And although the Examining Division's conscious rejection of decision T 231/85 led to the wrong conclusion, as stated above, it must be stressed that taking a different line from an as yet isolated appeal decision - as opposed to established Board of Appeal case law - cannot be regarded as a substantial procedural violation. There is therefore no reason to reimburse the appeal fee.

ORDER

For these reasons it is decided that:

1. The Examining Division's decision of 25 November 1987 is set aside.

2. The matter is remitted to the department of first instance with the order that a patent be granted on the basis of the following documents:

- Claims 1 to 4, received on 30 September 1981;

- the description, published as EP-A1-28 755, with editorial amendments still pending.

3. The request for reimbursement of the appeal fee is refused.