New Referral to the Enlarged Board of Appeal (G1/23)
7 July 2023
On 27 June, a new referral was made to the Enlarged Board of Appeal (EBA) in case T 0438/19. The referral seeks clarification on whether a commercially available product, with an undisclosed composition or internal structure, should be excluded from the state of the art for patentability within the meaning of Article 54(2) EPC.
“State of the Art”
In theory, whether a concept is known should be simple to assess. If a concept has already been made available to the public at the priority date, then it is known and, therefore, forms part of the state of the art. However, the question of whether something is “available to be public” can be less straight-forward when considering chemical compositions of available products, which are not otherwise disclosed.
Until now, the position at the EPO has been led by G1/92, in which the EBA decided that:
- The chemical composition of a product is state of the art [i.e. already known] when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
- The same principle applies mutatis mutandis to any other product.
In other words, where a skilled person can analyse and reverse engineer an available product without undue burden, then the composition can be considered as known.
Background to this Case
This latest referral originates from the appeal proceedings of European patent EP2626911, which relates to an encapsulating material for a solar cell comprising an ethylene/α-olefin copolymer.
In the appeal proceedings, a decision on inventive step ultimately depended on whether the commercially available polymer “ENGAGE® 8400” had been made publicly available before the effective date of the patent. The significance of this is that, if ENGAGE® 8400 was commercially available and deemed to be part of the state of the art within the meaning of Article 54(2) EPC, it could be used as starting point to assess inventive step.
The Opponent/Appellant believed that ENGAGE® 8400 was commercially available and part of the state of the art and provided evidence that the polymer was disclosed in leaflets prior to the effective date of the patent. Unsurprisingly, the patentee argued the opposite, on the basis that the polymer could not be reproduced by the skilled person – as required by G1/92 – without knowledge of the synthesis conditions, such as the specific catalysts and reaction conditions. This would necessitate an extensive research programme, for which success was not guaranteed, and this would place undue burden on the skilled person.
In considering inventive step, the Board in T 0438/19 considered previous case law and noted that the test set out in G1/92 is applied inconsistently. The interpretation of “available to the public” has varied and has led to either: (1) the exclusion of a product itself from the state of the art (for example T 370/02, T 2045/09, T 1833/14 and T 23/11); or (2) the exclusion of only the chemical composition/internal structure of a product from the state of the art (for example T 946/04 and T 1666/1). In addition, the subjective criteria of the degree of detail required for the analysis of a product and the requirements for reproducibility have been applied differently.
These diverging interpretations have led to legal uncertainty when it comes to assessing what constitutes the state of the art in relation to commercially available products.
Because of this apparent divergence, the Board has sought clarification from the EBA.
Questions Referred to the EBA
The following questions were referred to the Enlarged Board of Appeal:
- Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?
- If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?
- If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?
The EBA’s answers to these questions will be significant not only to the outcome of the appeal proceedings involving ENGAGE® 8400, but also for the interpretation of when a commercial product may be excluded from the state of the art, which has considerable practical relevance in all technical areas, not just those with chemical subject-matter.
The date on which an answer from the EBA can be expected is not yet known but we will continue to monitor the situation with interest. If you have any questions on how this referral may impact your patents or applications, please feel free to get in touch with your Withers & Rogers contact, who would be happy to help.
Ailis Chadwick
Life Sciences & Chemistry group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP July 2023
