Decision G1/23 – The prior art status of a commercially available product

In July, the Enlarged Board of Appeal of the European Patent Office gave decision G1/23 relating to the prior art status of a commercially available product, the structure or composition of which is not necessarily possible to analyse or reproduce.

The decision closely relates to an earlier decision G1/92, according to which the chemical composition of a product is part of the state of the art, if the product as such is available to the public and the person skilled in the art can analyse and reproduce it, irrespective of whether the skilled person has any reason to do so.

The questions asked

The following questions were asked of the Enlarged Board of Appeal.

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?

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?

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?”

The earlier decision G1/92

The earlier decision G1/92 confirmed that properties of a product are part of the state of the art, even if the skilled person does not have any reason to analyse these properties. According to this decision, the product put on the market must also be reproducible, in order to be part of the state of the art.

Decisions of the Boards of Appeal have used two different interpretations of this decision, and thus, a clarification of this point was asked for, among other questions.

The first question asked

In the decision G1/23, the Enlarged Board if Appeal reformulated the first question asked to read: is the not analysable and reproducible (i.e. that cannot be manufactured) product excluded from the prior art per se, or whether G 1/92 only means that while the composition of the product did not become part of state of the art, the product itself does still belong to the state of the art? In the latter case, also features that are themselves analysable and reproducible, are part of the state of the art.

Concerning the other parts of the first question, the Enlarged Board of Appeal states that there is no need to separately assess the analysis and reproduction of the product, and that a product put on the market comprises both natural products and manufactured products. The Board did also not take a stance on the question of what is ”undue burden”, other than stating that there is no undue burden if the person skilled in the art can analyse and reproduce the product or its composition, based on their general knowledge.

The reasons (r.2.2.4) discuss at more length what is reproduction (i.e. for example manufacturing) in decision G1/92. According to G1/23, in the earlier decision reproduction clearly means manufacturing, and not only obtaining the product from the market, and this was meant also in the question asked.

But what does ”reproduction” mean?

A major part of the reasons of the decision focuses on this question, and the decision does state that answering this question is sufficient for answering the whole referral.

A first alternative is that a product brought on the market is not part of the state of the art, if it is not possible to reproduce it. According to the Enlarged Board, this is an absurd interpretation, as then nothing that is available in the nature would be part of the state of the art. Indeed, in reality, almost all existing products are based on natural products, such as compounds, atoms and materials.

According to a second alternative, only the composition of a product that is not reproducible is not part of the state of the art. The Board however found a difficulty in using this alternative in that it would mean that an existing property of a product would not exist. In reality, products have for example physical properties that exist, even though they are not published. Similarly, products have a chemical composition, that exist even though it has not been analysed and determined. Additionally, a skilled person would, when searching a new solution to a problem, typically first use existing products, the properties of which are known, even if they would not know their exact composition. Therefore, using this second alternative would also lead to an absurd end result.

According to the Enlarged Board, the correct interpretation of reproduction in decision G1/92 does thus also include the option where the product is obtained from the market. Therefore, the requirement of reproducibility in decision G1/92 is obsolete, as all commercially available products fulfil the requirement of reproducibility.

Answers to the questions asked

The Enlarged Board answered question 1 as follows. A product put on the market cannot be excluded from the state of the art merely because its composition or internal structure cannot be analysed and reproduced. In this answer, one must keep in mind that reproduction includes buying the product from the market.

The answer remains the same, even if the product is later no longer available on the market. In practice it may well be that it would be more difficult to prove what was made public, but similarly to for example public webpages (or webpages that have been public) that cannot be removed from the state of the art, now or previously commercially available product cannot be removed from the state of the art. If the product changes, the new product becomes part of the state of the art at the moment it is made available to the public.

In the assessment of inventive step, the step of assessing whether a skilled person would have used the product to solve a technical problem, it is also possible to take into account whether an important property of a product would have been reproducible.

The decision also reminds us that the fact that a non-reproducible product is part of the state of the art does not necessarily mean that such product or its features need to be taken into account when assessing novelty or inventive step (r.93).

The Enlarged Board answered the second question, relating to the technical information published before the filing date of the application, as expected, by stating that such information is part of the state of the art. It is not relevant whether the skilled person is able to analyse and reproduce the product and its composition and internal structure.

The third question was not answered, following the answers to the first two questions, as it was no longer relevant.

The answers were thus:

I. 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.

II. 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.

Read more: https://www.epo.org/en/boards-of-appeal/decisions/g230001ex1