The EPO Enlarged Board of Appeal (EBA) recently issued it’s decision on G 1/23, dealing with the threshold for a complex product to be validly cited as prior art in Europe.
The key take homes are:
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Complex products are citable, with all “analysable” properties of the complex product being prior art in Europe.
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The EPO has decided that complex products do not need to be independently “reproducible” to be valid prior art in Europe.
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There remains an open question whether it is only properties which are analysable with “undue burden” that are prior art, or whether any property is prior art provided it could (in principle) be determined by analysis. Further case law (e.g. arguments at opposition) will likely centre around this.
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The EPO has not adopted an absolute “on-sale bar” – only products which are placed on sale in the public domain and which satisfy the “analysable” threshold are citable in Europe.
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Even if a product is withdrawn from the market and is no longer available, this does not change the prior art effect – this is still citable. However, evidence is likely required to demonstrate the properties that were disclosed if this is to be relied upon as prior art.
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G 1/23 considers chemical compositions, but the decision also applies to any product that can be analysed to establish its underlying structure and functional properties, such as mechanical products or systems comprising multiple components.
Technical background of the case
In more detail, and as reported in our article here, G 1/23 arises from a Technical Board of Appeal 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 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 decision of the Enlarged Board of Appeal
The EBA ultimately decided that:
The chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition
(Paragraph 73 of the decision)
and:
All analysable properties of the product put on the market became public
(Paragraph 91)
In other words, all properties of the product and its chemical composition or internal structure will belong to the state of the art to the extent they are analysable. There is no requirement for the product to be reproducible. All that matters is that the properties were able to be analysed.
Impact on the referring case (T 0438/19)
Procedurally, the Technical Board of Appeal handling the case which led to the referral will now be tasked to apply the new legal test from G 1/23. In this case, it was generally agreed that the prior art disclosure met the analysability threshold. Applying the new G 1/23 standard, it therefore seems likely that the claims of the patent will be found to be obvious.
Insights to be gained from the decision
“Undue burden” threshold: past case law indicates that there may be an “undue burden” threshold regarding analysability. In other words, it may well be in principle have been possible to analyse and determine a property of a product, but to do so would perhaps be too difficult or perhaps would involve non-standard techniques.
Unfortunately, G 1/23 largely sidestepped this and so we don’t have additional insights. In other words, it is unsettled for now whether there is an undue burden threshold for the analysability criterion – it seems likely that this will be the focus of arguments in future cases (e.g. future oppositions).
On-sale bar: in short, G 1/23 provides no absolute on-sale bar and there’s no indication that the EPO intends to adopt one. If a product is sold in public, the EPO will consider this a disclosure just like any other public disclosure and all “analysable” properties will be prior art.
This contrasts with an absolute on-sale bar where the whole product, including all of its properties, would be prior art, regardless of their analysability and/or reproducibility. Here, even the non-analysable properties would not be patentable if there had been a commercial sale of the underlying product.
Moreover, unlike some absolute on-sale bar provisions, in Europe there is still no notion of a confidential or non-public sale forming part of the state of the art. Things that do not occur in public are not prior art in Europe.
Products withdrawn from sale: the decision also shed some light on situations where a product once was once commercially available but no longer is (e.g. if a product is discontinued). The EBA noted that in principle this doesn’t change the prior art disclosure impact.
Practically speaking, however, you will need evidence to demonstrate that something was disclosed. If you suspect a product might be discontinued from public sale and you suspect you’ll need to rely on that product later as prior art, then it can make sense to keep documentation of properties or product samples as evidence.
Overall, this decision provides useful clarity on the threshold requirements for the prior art effect of complex products. In summary, more products are likely to qualify as prior art since the previous “reproducibility” hurdle has been removed.
For more information, please contact James Snaith, Kate Morgan, Tom Hailes or your usual Kilburn & Strode advisor.