The EPO’s Enlarged Board of Appeal clarifies when a marketed product belongs to the state of the art at the EPO

The EPO gets philosophical - can a product be in the palm of the hand of a skilled person, yet they do not know it exists? (spoiler: no)

The EPO’s Enlarged Board of Appeal (EBA) has issued its decision in case G1/23. The decision has general applicability to EPO patent practice but is especially relevant to the field of complex chemical products. The headline of the decision is as follows: 

1. A product put on the market before the date of filing of a European patent application cannot 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 by the skilled person before that date.
2. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.

The decision deals with and seeks to clarify a fundamental question of EPO law around whether, and to what extent, a commercially available product must be “reproducible” by a skilled person to be accorded prior art status at the EPO. This refers to both natural and man-made products. This principle of “reproducibility” was introduced by an earlier EBA decision, G1/92, and is considered in detail in the current decision. In G1/23, the EBA goes to great lengths to try to reconcile the legal fiction of “the skilled person” and “common general knowledge” with what occurs in practical reality when dealing with such products, seeking to establish a position that is legally consistent with the principles of G1/92 as well as reflecting practical reality.

Key points

Ultimately, the EBA in G1/23 found that “the expected reproducibility of the product must be understood in a broader sense, namely as the ability of the skilled person to obtain and possess the physical product”. The EBA therefore concludes that the correct interpretation of the reproducibility criterion in earlier EBA decision G1/92 is that “The chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition” (reasons 73). The statements at points 74 and 75 of the reasons are highly instructive: 

It also follows from the correct interpretation of G 1/92 that all analysable properties of the product put on the market will belong to the state of the art, i.e. they will represent technical information that the skilled person is aware of and will consider relying on when looking at technical solutions” (reasons 74).

and

These considerations also provide a straightforward answer to the prominently argued question of the later patenting of the product that has already been put on the market and cannot be reproduced by a different route. If such a product forms part of the state of the art, this must lead to the result that a later product cannot be found novel, if all the claimed features were disclosed by the earlier available product” (reasons 75).

The EBA found that it cannot be correct to take the position that a non-reproducible but otherwise existing and commercially available product does not belong to the state of the art (in its entirety), because this would lead to absurd outcomes in the EBA’s view (reasons 56), such as the skilled person being legally unaware of the existence of the given product, even though it is quite obviously readily commercially available and usually marketed to the skilled person for a given purpose. The EBA therefore rejects the position adopted by some EPO Technical Boards of Appeal (TBA) in previous decisions, such as T1833/14 and T0023/11. The EBA in G1/23 states that “The assumption that the skilled person would ignore non-reproducible products cannot hold”…and…”Readily available products cannot be excluded from the common general knowledge of the skilled person, hence also not from the state of the art within the meaning of Article 54(2) EPC” (reasons 67).

Similarly, the EBA also rejects the line of reasoning that it is not the non-reproducible product in its entirety that should be excluded from the state of the art, only its composition. Under this interpretation (referred to by the EBA as the “second interpretation of G1/92”), the legal fiction is that the composition of the prior art product is not part of the state of the art, and the EBA takes the natural understanding of this to mean that “the skilled person knows the composition but disregards it, ostensibly because it is unable to reproduce it” (reasons 69).  However, the EBA also rejects this interpretation, again finding that this leads to an untenable outcome following a chain of logic (reasons 70). 

Conclusions

This means that those features of a marketed product that were analysable by a skilled person without undue burden at the filing date of the patent concerned will be considered part of the state of the art for examining novelty and inventive step under EPO law following G1/23. However, the EBA does not go into detail on the question of undue burden as it found it unnecessary to address this in answering questions put to it by the referring Board in case T438/19.

Patent professionals reading the decision will immediately note that future case law battle lines are likely to be drawn around whether it can be demonstrated that a given property of a product was analysable at the filing date and / or whether there would have been an undue burden for the skilled person to determine the relevant features of the product at the filing date. 

The EBA’s decision therefore considerably clarifies EPO case law around the prior art status of a “product put on the market”, providing improved certainty to innovators and third parties alike, whilst leaving open questions that future case law decisions will need to answer.

Have questions about the decision? Reach out to Jonathan Stafford or Liam O'Connor, who are part of the Marks & Clerk Chemistry, and Life Sciences teams.