G 1/23 - reproducibility not a requirement for a commercial product to be prior art

The Enlarged Board of Appeal (EBA) of the European Patent Office has now handed down its decision in G 1/23.

Background

The referral in G 1/23 stems from T 438/19.  The patent in suit claimed a material for encapsulating a solar cell, the material comprising an ethylene/alpha-olefin copolymer.

ENGAGE® 8400, a copolymer product, was available on the market before the priority date of the patent.  Partial technical information about the structure and composition of ENGAGE® 8400 had also been disclosed before the priority date.

However, there was no information on how to manufacture ENGAGE® 8400.

The opponent-appellant argued that claim 1 of the patent would have been obvious starting from ENGAGE® 8400 as the closest prior art.  The patentee, relying on the case law in G 1/92, generally argued that ENGAGE® 8400 was not enabled (the skilled person could not reproduce the product), and thus should not be considered as prior art.

Thus, the key issue was whether ENGAGE® 8400 could be cited as prior art and, if so, to what extent.  If the skilled person could not reproduce ENGAGE® 8400 without undue burden, would the product be citable at all, despite being available on the market before the priority date?

The referred questions

The following questions were put forward to the EBA:

Q1.      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?

Q2.      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?

Q3.      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 answers

The EBA found that:

A1.       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.

A2.       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.

Question 3 need not be answered.

Analysis

Accordingly, the fact that a commercially available product could not be recreated by the skilled person does not preclude the product from being part of the state of the art.  Note that the notion of ‘undue burden’ has also been omitted by the EBA in the answers; put simply, reproducibility is not a bar in this context.

The EBA reasoned that, given that non-reproducible products are to be included in the state of the art, relevant technical information on such products must obviously also belong to the state of the art.

The EBA also referred to a case of a later patenting of a non-reproducible product that has already been put on the market.  The EBA noted that 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 over the product put on the market, if all the claimed features were disclosed by the earlier available product.

All analysable properties of the product put on the market will be part of the state of the art.  In the words of the EBA, “[i]f the composition could be analysed, this became part of the state of the art as well, also if the skilled person would not have been in the position to reproduce it on their own”.  The analysable properties “will represent technical information that the skilled person is aware of and will consider relying on when looking at technical solutions”.

The EBA also considers that the fact that non-reproducible marketed products belong to the state of the art does not mean that such products (or their features) are treated in the same way under novelty and inventive step.  In this regard, the EBA acknowledged that “[t]he fact that the skilled person would possibly recognise that they are unable to reproduce some important property of the product may also represent relevant technical information. This can be taken into account when it is to be assessed whether the skilled person would consider the product as a relevant prior art in view of a technical problem they are seeking to solve” (emphasis added).

The skilled person “may have good reasons for disregarding some prior art, for example because of insufficient information attached to it”.

Therefore, disclosed but non-reproducible features of a product may, but need not, be considered when assessing inventive step.  The EBA noted that there are no strict rules in this context and so this must be decided on a case-by-case basis:

“The relevant technical teaching that a skilled person would take from such a product is always case specific - it depends on both the product in question and the invention under examination”

Finally, the EBA did not consider the part of Q1 of the referring board relating to analysing the product without undue burden, e.g. at what point the efforts to analyse a property of a product become an undue burden or whether the standard of undue burden should be applied in the first place.  Nevertheless, the EBA acknowledged that the issue of “analysis without undue burden” may indeed arise.

The decision

The decision discusses in detail the requirement of ‘reproducibility’ in the context of G 1/92.  The referring board suggested two interpretations of G 1/92 for cases where the composition of a product (and therefore the product) cannot be reproduced: either (a) the product is not part of the state of the art in its entirety or (b) only the composition of the product does not belong to the state of the art, but the product itself and its reproducible properties are part of the state of the art.

Examining the relationship between the state of the art and the common general knowledge of the skilled person, and referring to a putative (re)production process, the EBA generally found that the skilled person “cannot achieve anything” without non-reproducible but otherwise available products – the skilled person trying to reproduce a product will “at some point have to turn to a material that they cannot reproduce”, since “there are no products on earth that are in the end not based on materials that themselves cannot be reproduced”.

The EBA held that available products cannot be excluded from the state of the art and thus rejected both interpretations of the referring board.

The EBA also noted that this finding reflects the behaviour of the skilled person in the real world.  According to the EBA, the skilled person would “look for solutions on the market when a specific solution […] is required but their own knowledge or resources are not sufficient to prepare such a material”.  The EBA argued that this is the first step the skilled person would take before making an attempt to prepare the material themselves.

The EBA found that the condition of ‘reproducibility’ of a product as developed in G 1/92 can be interpreted as “the obtaining of the product from the market in its readily available form”.  Thus, it is enough that the skilled person can simply purchase the product rather than make the product themselves.

Thus, the EBA arrived at the following interpretation of G 1/92: “[t]he 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 […]” (rather than ‘analysed and reproduced’).

Impact

Non-reproducible commercial products are state of the art.  Applicants looking to file first patent applications covering such products should strongly consider doing so before launching the products.  Supplementary, post-launch filings may need greater care at the drafting stage.

Opponents and third-parties can deploy technical information about non-reproducible products during prosecution or opposition proceedings; this opens new ways of attacking product/composition claims.

If you would like to discuss G 1/23 or have any questions about EPO practice in general, please do not hesitate to get in touch.

This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.