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.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
In this article, Louise Baker examines the potential consequences of this decision and its effect on our understanding of prior art.<\/p>\n\n\n\n
Background<\/strong><\/p>\n\n\n\n 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.<\/p>\n\n\n\n The main point of contention was whether the commercially available polymer \u201cENGAGE\u00ae 8400\u201d should be considered prior art.<\/p>\n\n\n\n Certain properties of ENGAGE\u00ae 8400 were demonstrated in the prior art. However, the patent proprietor argued that ENGAGE\u00ae 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.<\/p>\n\n\n\n The Decision<\/strong><\/p>\n\n\n\n The Enlarged Board analysed the different interpretations of the \u201creproducibility requirement\u201d set out in G1\/92 and clarified that the \u201creproducibility requirement\u201d must be understood in a broader sense, namely as the ability of the skilled person to obtain and possess the physical product.<\/p>\n\n\n\n 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.<\/p>\n\n\n\n The Enlarged Board held that it was not necessary to consider the \u201crequirement of analysability\u201d of a commercially available product separately from the \u201crequirement of reproducibility\u201d in order to answer the referred questions.<\/p>\n\n\n\n The Enlarged Board answered the referred questions as follows:<\/p>\n\n\n\n