Obviousness a fly in the ointment for Bayer

Syngenta Crop Protection AG v Bayer Intellectual Property GmbH [2018] APO 19 (9 March 2018)

Syngenta has been successful in its opposition to two related Bayer patent applications. The patents relate to an insecticidal composition comprising a synergistically effective combination of one neonicotinoid compound selected from [a number of listed neonicotinoids] and an anthranilamide compound.

Although unsuccessful in its attacks on lack of clarity, fair basis and novelty, Syngenta successfully argued a number of claims lacked an inventive step in light of the common general knowledge together with the information in an earlier patent directed to various anthranilamides and their use as pesticides (referred to as D4).

The evidence established that, when faced with the problem of making a formulation with improved activity when compared with existing formulations, it was common general knowledge that combinations could provide a solution.

D4 taught a combination of an anthranilamide and at least one other biologically active compound, including an additional insecticide. Amongst the 91 possible additional insecticides disclosed in D4, certain neonicotinoid compounds within the scope of the claims of the opposed applications were indicated as preferred, and importantly, two such compounds were among the most preferred.

The Delegate accepted that when seeking to formulate an insecticidal composition, the selection of a combination of two insecticides within the scope of at least claim 1 of the Bayer applications would have been obvious based on D4. The Delegate further found that conducting experiments on the compositions for efficacy and to optimise the formulation would be a matter of routine. As a result, the Delegate accepted that the presence of any synergy and an appropriate weight ratio would have been determined as part of these routine steps.

As expected, Bayer led expert evidence to the effect that although synergy could occur, it was not a given (the combination could be antagonistic) and there could be no reasonable expectation of success in trying the compounds of the claims. The decision, in finding the claimed invention obvious where there appeared to be a genuine conflict on the evidence, is significant given application of the pre-Raising the Bar onus applied. Although the prior art appeared to be highly relevant, the decision suggests there is still strong merit in pre-grant oppositions where obviousness is likely to be a major ground of attack.


David is an experienced IP litigator and registered patent and trade marks attorney who brings a technological understanding together with legal expertise to resolve IP disputes for Australian and international businesses.