New Enlarged Board of Appeal referral: G 1/23

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) is tasked with deciding points of law referred to it by a Board of Appeal with a view to ensuring uniform application of the European Patent Convention, particularly with regard to those point of law of fundamental importance.

One board, reviewing a decision taken by the opposition divisions of the EPO, has referred to the EBA, by interlocutory decision T 438/19, questions pertaining to the extent to which a commercially available product is part of the state of the art for the assessment of novelty/inventive step. In particular the referring board believes it has identified divergent lines of case law in this regard.

The interlocutory decision T 438/19 relates to a patent granted for a material suitable as an encapsulating material for solar cell, the material being defined by a number of properties, notably including a particular level of aluminium content.

A material called ENGAGE® 8400 was commercially available at the date of filing. A number of its properties were also publicly disclosed and these apparently correspond to those claimed apart from in regards to the level of aluminium content.

Whether or not the invention can be considered as involving an inventive step purportedly hinges on whether or not ENGAGE® 8400 is part of the state of the art.

The patent proprietor (respondent in the appeal) alleged that the ENGAGE® 8400 was not part of the state of the art because there were insufficient details to enable ENGAGE® 8400 to be reproduced. It is not disputed that it could however have been obtained by purchase.

A previous decision of the EBA (G 1/92) has dealt with the question of commercially available products before. The alleged divergence of case law appears to have come from the interpretation of this decision. In particular, there appears to be a suggestion from the board that a valid interpretation of “Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art.” in r. 1.4 of G 1/92 could be that the reverse is also true – that is: “a product put on the market becomes state of the art and therefore available to the public only when the composition or internal structure of the product can be discovered and reproduced without undue burden.” (r. 8.2 of T 438/19, emphasis added).

While it seems entirely reasonable that a commercially available product’s internal structure or composition may not be available to the public, it is harder to understand a conclusion that that the product itself is also not available since the product can be bought, used, and possibly, to some extent, modified.

It seems that a relevant question for inventive step may not be whether or not ENGAGE® 8400 is part of the state of the art, but rather to what extent the skilled person could and would modify ENGAGE® 8400 without full knowledge of its internal structure or composition (a question not of law but of fact).

If in order to modify ENGAGE® 8400 to have the claimed aluminium content, the skilled person would need to know more about its composition and internal structure than was made available to the public, then that may suggest that the invention is not obvious when starting from ENGAGE® 8400. However, it is harder to see how it would suggest that that ENGAGE® 8400 is not prior art.

Nevertheless, it will be interesting to see how the EBA responds to this referral and evaluates the diverging interpretations of G 1/92. Its decision could have a major impact on what can and can’t be patented in Europe and so will be eagerly anticipated.

The exact questions which have been referred to the EBA are:

1. 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?

2. 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?

3. 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?