The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has just released its decision in referral G 1/23, where it had to consider the prior art effect of putting a complex non-reproducible product on the market. According to earlier EBA decision G 1/92, the chemical composition of a product is state of the art when the product as such is available to the public and can be analyzed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analyzing the composition.
The case arose from opposition/appeal proceedings (appeal number T0438/19) in connection with European patent number 2626911. The opposition was rejected by the Opposition Division, which found that the invention involved an inventive step, against which finding the opponent appealed. The closest prior art was the commercially available product "ENGAGE® 8400", a complex polymer. The method for manufacturing the product exactly was not in the public domain, and its exact reproduction is not straightforward, even if the material, i.e. the final product itself, is available to the skilled person for analysis. The opponent argued that the skilled person could make a product sufficiently similar to ENGAGE® 8400, and an exact reproduction (following G 1/92) is not required. The proprietor argued that this product is not prior art because its composition/internal structure cannot be reproduced (following decision G 1/92). Who's right?
Over to the EBA...
...which was asked to answer 1) whether a product put on the market before the filing date of a European patent application can be excluded from the state of the art under Article 54(2) EPC solely because its composition or internal structure could not be analyzed and reproduced by the skilled person before that date. If the answer to this question is "No", then the EBA was also asked 2) whether any technical information about such a product that was made publicly available before the filing date forms part of the state of the art, regardless of whether the skilled person could analyze and reproduce the product and its composition or internal structure. (There was also a third question referred, but this was moot).
The EBA held that:
- A product made available to the public (e.g., by being put on the market) cannot be excluded from the state of the art simply because its composition or internal structure could not be analyzed and reproduced by the skilled person before the relevant date (i.e. the answer to Question 1) is "no, it isn't excluded").
- Any technical information about such a product that was made publicly available before the filing date forms part of the state of the art, regardless of whether the skilled person could analyze and reproduce the product and its composition or internal structure (i.e. the answer to Question 2) is "yes, it does form part of the prior art").
The EBA found that answering "yes" to question 1) would mean that the product "simply does not exist" for a skilled person, which "directly contradicts everyday experience", and "is clearly far-fetched and utterly implausible, manifestly contradicting notorious facts". This leads to "an absurd result and cannot hold". The EBA thus found that the requirement for the product to be "reproducible" from G 1/92 must include being able to obtain the product from the market, to avoid the logical conclusion that otherwise "no material in the physical world would belong to the state of the art". Great stuff.
" ...it remains that the requirement of reproducibility of the state of the art, the reproducibility excluding the mere obtaining of the product from the market or taking it from nature, leads to the result that no material in the physical world would belong to the state of the art". "
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