Upon reading the ECJ decistion in re Astra Zeneca, I suddenly got a bad feeling about the creative ways a good patent attorney in the field of mechanical arts often works.
When arguing on the advantages of the invention, arguments on the technical effects of the distinguishing features need to be provided. These arguments have to be plausible to an extend that the Examiner believes that the technical effect is achieved indeed. This assesment has to be made "on the balance of probabilities".
When trying to argue on the inventive step, the patent attorney has to formulate an "objective technical problem" solved by the feature in question by referring to the technical effects thereof. If the specific advantages of a particular feature (e.g. taken from the specification) are not explicitly mentioned in the specification and the inventors are not available (e.g. during oral proceedings), both the patent attorney and the examiner usually rely on their technical expertise and sometimes "predict" the technical effects in a way which may sometimes be speculative.
This is usually not considered problematic in the mechanical arts where the technical effects of well-defined measures are usually predictable such that the examiner may well assess the plausibility of the attorney's arguments using his technical knowledge. However, the practice shows that a "good story" which is plausible and supported by convincing technical arguments provided by the attorney is often decisive in this regard.
In the field of chemistry or pharmacy where the effects of features may be less predictable, the EPO often requires the provision of comparative studies, which may be handed in later provided that the effects in question had been asserted already in the original disclosure. This is very rare in mechanics.
Now what happens if your client is an undertaking dominating the market and the "story" provided by the attorney in the mechanical arts turns out to be wrong in the end?
The AstraZeneca ruling by the ECJ (which related to information needed to obtain a supplementary protection and not ton inventiveness) contains a passage which may be transferred to the above case immediately:
"In the present case, the Court observes that the submission to the public authorities of misleading information liable to lead them into error and there-fore to make possible the grant of an exclusive right to which an undertaking is not entitled, or to which it is entitled for a shorter period, constitutes a practice falling outside the scope of competition on the merits which may be particularly restrictive of competition. Such conduct is not in keeping with the special responsibility of an undertaking in a dominant position not to impair, by conduct falling out-side the scope of competition on the merits, genuine undistorted competition in the common market"
What to learn from this? Be prudent with speculations on technical effects. Astra Zeneca was sentenced to pay a fine of 52,5 million EUR......