Board of Appeal of the European Patent Office: “Dasatinib” – plausibility and burden of proof for technical effect

A granted patent claim was directed to an extremely broadly defined group of compounds including dasatinib, which is an inhibitor for specific protein tyrosine kinases. In the appeal proceedings the patentee tried to defend a claim directed to dasatinib. The only disclosure as to the technical effect reads: “Compounds described in the following Examples have been tested in one or more of these assays and have shown activity”. The Board of Appeal has revoked the patent for lack of inventive step (T 0488/16). The Board found that this cited statement is, in the absence of any verifiable technical evidence, not sufficient to render it credible that the technical problem that the application purports to solve, namely providing protein tyrosine kinase inhibitors to treat disorders or diseases associated therewith, is indeed solved. The Patentee tried to defend inventiveness by relying on the technical effect of dasatinib, for which he provided post published evidence. The decision deals in great detail with the issue that it must be made plausible in the application as filed and at the application date that a certain technical problem has indeed been solved. Only then may the Patentee be allowed to rely on post published evidence for the technical effect. The disclosure of the application did not take that hurdle and the Board of Appeal concluded: “It follows from the above that the problem to be solved has to be defined in a less ambitious way, namely as a provision of a further chemical compound”. The solution of that problem was obvious in the present case.

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