EPO Enlarged Board Decision Confirms Commercially Available Products Are Prior Art

A recent European Patent Office Enlarged Board of Appeal decision G1/23 has clarified that commercially available products form part of the state of the art irrespective of whether the skilled person is able to reproducibly manufacture them.

For thirty or so years, the leading authority on whether a product has been made available to the public and hence forms part of the state of the art has been Enlarged Board Decision G1/92, in which it was decided:

1. The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
2. The same principle applies mutatis mutandis to any other product.

G1/92 therefore introduced an "enablement" requirement for prior art. However, as G1/92 did not set out the extent to which the product must be reproducible, it has been applied in a non-uniform manner in various EPO appeal decisions.

T0438/19 is an appeal from an Opposition Division decision that rejected an opposition. The opposition relied on an argument of lack of inventive step over a commercially available complex polymer as prior art. The product was available to the skilled person for analysis, but the method of manufacturing the polymer was not in the public domain at the priority date. It would thus have been very difficult for a skilled person to reproduce the polymer exactly.

In view of the diverging case law on the concept of "reproducibility", the Board in T0439/19 referred three questions to the Enlarged Board:

• Question 1

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?

• Question 2

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?

• Question 3

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?"

In reaching its Decision, the Enlarged Board provides a lengthy discussion, after which it concluded that requiring a product to be reproducible to form part of the state of the art leads to absurd results. For example, following the G1/92 "enablement" requirement to its logical conclusion results in a fiction that a "commercially available but non-reproducible product" simply does not exist for the skilled person when assessing patentability. This could lead to later patenting of already commercially available products, on the grounds that a skilled person themself could not "reproduce" the product, which cannot be a correct application of the law.

A distinction was made between written disclosures (which may be purely theoretical) and commercially available physical products (which by definition exist in the real world). "Reproducibility" was reinterpreted to cover being able to obtain and possess the product (for example, by simply purchasing it). A commercially available product is thus inherently made available to the public, irrespective of whether it can be reliably manufactured by a person skilled in the art without undue burden.

The Enlarged Board therefore answered Question 1 in the negative and Question 2 in the affirmative (Question 3 being therefore moot). A reinterpretation of G1/92 was therefore made.

It is important to be aware of potential prior art when filing a patent application so that it can be drafted to exclude known technology. If you are unsure whether a product or disclosure is relevant, your Williams Powell attorney will be able to advise further.