A decision by the Enlarged Board of Appeal of the European Patent Office (EPO) has broadened the scope of what qualifies as prior art and is expected to significantly influence how novelty and inventive step are evaluated.
The Board concluded that a product put on the market 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 reproduced by the skilled person.
In this article, Louise Baker examines the potential consequences of this decision and its effect on our understanding of prior art.
Background
In T 0438/19 (the case underlying this referral), the opponent lodged an appeal against the decision of the opposition division to maintain European patent no. 2626911, directed to a material suitable for use as an encapsulating material for a solar cell, as granted.
The main point of contention was whether the commercially available polymer “ENGAGE® 8400” should be considered prior art.
Certain properties of ENGAGE® 8400 were demonstrated in the prior art. However, the patent proprietor argued that ENGAGE® 8400 had not been made available to the public within the meaning of Article 54(2) EPC, taking into account the reasoning of the Enlarged Board of Appeal in G1/92, because it could not be exactly reproduced.
The Decision
The Enlarged Board analysed the different interpretations of the “reproducibility requirement” set out in G1/92 and clarified that the “reproducibility requirement” must be understood in a broader sense, namely as the ability of the skilled person to obtain and possess the physical product.
The reproducibility requirement is inherently fulfilled by a product put on the market, irrespective of whether the skilled person could reproduce the product and its composition or internal structure.
The Enlarged Board held that it was not necessary to consider the “requirement of analysability” of a commercially available product separately from the “requirement of reproducibility” in order to answer the referred questions.
The Enlarged Board answered the referred questions as follows:
- 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.
- 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.
- In view of the answers to Questions 1 and 2 an answer is not required.
Practice Points
This decision represents a substantial shift from the enablement-based interpretation in G 1/92.
The Enlarged Board highlights that irreproducibility alone does not exclude a product from the state of the art; the decisive factor is public availability.
This decision essentially broadens the scope of what qualifies as prior art and is expected to significantly influence how novelty and inventive step are evaluated, not only in the field of Chemistry but across various technological fields.
Your usual Forresters attorney is on hand to explain how this recent decision may affect you. Please reach out with any questions resulting from this decision.
