To what extent is a commercially available product with a hidden internal composition considered prior art?
Posted:
A new referral to the Enlarged Board of Appeal (EBoA), G 1/23, seeks guidance on the criteria to apply when determining whether the chemical composition and/or internal structure of a commercially available product can be excluded from the state of the art.
Generally, the chemical composition/ internal structure of a commercially available product is considered state of the art when the product can be analysed and reproduced by the skilled person, even if the chemical composition/ internal structure has not been explicitly disclosed (see decision G 1/92).
However, there has been conflict in the case law concerning:
- whether, if the product cannot be analysed and reproduced, the whole product should be excluded from the prior art or just the internal composition should be excluded. The extent to which the product is excluded has important implications for whether the product can be considered a suitable starting point for an inventive step attack;
- whether the skilled person needs to be able to analyse the product completely or just to the extent that they can confirm that the product is encompassed by the claims of the patent application or patent which it is cited against; and
- whether the skilled person needs to be able to reproduce an identical product to the commercial product, or if it is sufficient for the skilled person to be able to prepare a variant encompassed by the claims of the patent application or patent which the product is cited against.
The case underlying the referral
In T 0438/19, the case underlying the EBoA referral, the opponent lodged an appeal against this 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 opponent maintained that claim 1 of the patent lacked inventive step over cited document D1.
In contrast to the opposition division, the Board of Appeal (BoA) considered cited document D1 to potentially be prejudicial to the inventive step of granted claim 1. However, whether cited document D1 was prejudicial to the inventive step of granted claim 1 depended on the question of whether the commercially available product, ENGAGE® 8400 (i.e., example 3 of D1), had been made available to the public in the sense of A.54(2) EPC before the earliest priority date of the patent.
The patent proprietor argued that ENGAGE® 8400, a polyolefin elastomer, was not reproducible exactly from D1 without undue burden (i.e., that D1 did not provide an enabling disclosure of ENGAGE® 8400) and so the chemical composition and internal structure of ENGAGE® 8400 could not be considered state of the art under A.54(2) EPC. The patent proprietor submitted that EPO case law supports requiring exact reproduction of the product to be possible.
Additionally, the patent proprietor argued that, because ENGAGE® 8400 was not enabled, ENGAGE® 8400 was not a suitable starting point for assessing inventive step of granted claim 1. In particular, the proprietor considered that the properties of ENGAGE® 8400, disclosed in D1, should not be considered when assessing inventive step of granted claim 1.
The opponent countered that, irrespective of the extent to which the ENGAGE® 8400 polymer could be reproduced, certain properties of the material had been placed in the public domain by D1. The opponent held that “it would be incorrect and unreasonable if such publicly available information of a commercially available product could be disregarded on the basis that the specific commercial material could not be exactly reproduced”.
Questions referred to the EBoA
Due to the conflicting case law, the BoA considered it necessary to refer the following three questions to the EBoA, to reach a decision on whether claim 1 of the patent lacked inventive step over D1:
- 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 A.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?
- 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 a technical brochure, non-patent literature or patent literature) state of the art within the meaning of A.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?
- 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 outcome of the referral may impact how easy it is for applicants to argue patentability (novelty and inventive step) over commercially available products. If the EBoA adopts a strict approach to analysis and reproducibility, it may become easier to argue that the chemical composition and/or internal structure, or even disclosed properties of commercially available products are not state of the art.
Additionally, the outcome of the referral is likely to have impacts outside of the field of Chemistry, e.g., on whether the internal structure of commercially available mechanical and electrical products can be considered state of the art.
Chemistry
Munich
bcampbell@forresters-ip.com
