Introduction
A new referral (G 1/23) to the EPO Enlarged Board of Appeal (EBA) has recently been made regarding how the state of the art is defined in relation to prior disclosure of a product. In particular, the referral considers how the requirements of novelty under Article 54(2) EPC apply to the prior disclosure of a product that, if subjected to analysis, may fall within the scope of a later-filed claim.
- The EBA will aim to provide clarity on the requirement and threshold for enablement of a complex product in order to be validly cited as prior art.
- The decision will consider whether a product must be capable of being analysed and reproduced to be cited as prior art, with a view to clarifying divergent lines of earlier EPO case law.
- The EBA may also provide more guidance on the threshold or legal test for enablement of a known product to be considered part of the state of the art.
- The EBA should also confirm whether the enablement criteria extend to other technical documents relating to the product.
- The outcome may impact the ability to cite known products (and analyses of them) as part of novelty and inventive step attacks.
- The decision is not expected until 2024 but parties will be able to make further submissions and amicus briefs in the lead up to the oral hearing.
The referral considers chemical compositions, but the findings of
the case could also apply to any product that can be analysed to
establish its underlying structure and functional parameters, such
as mechanical products or systems made from multiple components. As
a result, this case could have a significant impact on a number of
cases across various technical fields.
Background of the case
The referral arises from a technical board considering a
decision to maintain a patent as granted following an opposition
(T 0438/19). The first instance decision
considers whether a copolymer material used in solar cells is
inventive over a product that was commercially available prior to
the priority date of the application in question. The previously
available product, when analysed, is shown to meet all of the
requirements of claim 1 of the application, except the required
aluminium content.
The proprietor has argued that the product does not form part of
the state of the art at the priority date because it would have
been an undue burden for the skilled person to analyse and
reproduce the underlying composition. On the other hand, the
opponent-appellant argues that the state of the art comprises the
known product and supporting technical data. Therefore, if the
known product is used as the starting point for considering
inventive step, the opponent considers that the change in aluminium
content would be obvious to the skilled person, rendering the claim
non-inventive.
The relevant law
Article 54(2) EPC states that "[t]he state of the art
shall be held to comprise everything made available to the
public by means of a written or oral description, by use,
or in any other way, before the date of filing of the European
patent application."
An earlier EBA decision considered a similar issue in G 1/92, and concluded that
"where it is possible for the skilled person to
discover the composition or the internal structure of the product
and to reproduce it without undue burden, then
both the product and its composition or internal structure become
state of the art".
One interpretation of this language is that the product itself can
still be "available to the public" (i.e. part of the
state of the art), even if the underlying structure and functional
parameters are not part of the state of the art because the product
cannot be analysed and reproduced without undue burden (i.e. not
enabled). An alternative interpretation is that a lack of
enablement of the product would mean that both the product per
se and the underlying structure and functional
parameters are not part of the state of the art. This potential
lack of enablement has practical consequences for whether the
product (or the supporting analytical data) can be used as a
starting point for an inventive step analysis.
The Board in the present case identified a divergence in the case
law on these points. In particular, different technical boards have
taken different approaches to how associated data on the underlying
structure and functional parameters are treated once a decision has
been made on whether the product can be analysed. The Board also
suggested there is some divergence in the legal test for whether
analysis of the product would be an "undue burden" for
the skilled person.
The EBA is tasked with ensuring the uniform application of EPO law
and this has prompted the present Board to refer three questions to
the EBA. These questions aim to clarify the requirement of
enablement when considering if a known product forms part of the
state of the art. As part of the referral, the Board has also posed
further questions that seek to establish whether the enablement
requirement extends to associated technical documents and to help
establish a defined threshold of what constitutes an "undue
burden" of analysis for the skilled person.
Referred questions
The questions that have been referred to the EBA are as follows:
- 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?
- 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?
- 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?
Comments
It would be a significant shift in the EPO's established
practice on assessment of prior art if the EBA permitted the
complete exclusion of a product from the state of the art, solely
on the basis that there was some aspect of it which was challenging
for the skilled person to analyse and reproduce. Therefore, it
seems that the EBA will have to grapple with the trickier question
of what legal test or threshold should be applied to enablement, in
order to provide more clarity over whether a known product can
legitimately be cited as part of a novelty or inventive step
attack.
The decision should also provide greater clarity regarding whether
associated technical information (e.g. post-published technical
brochures or non-patent literature) can be validly cited as prior
art, even if establishing the underlying structure and functional
parameters of the product is considered an undue burden.
A decision is unlikely to be made until next year, but we will be
keeping a close eye on proceedings. The consequences of this
decision could impact a number of cases and it will be interesting
to see what, if any, new legal tests the EBA may decide to
establish. We will continue to provide further commentary and
updates as the case progresses.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.