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.
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?
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.
For more information, please contact Duncan Bull, James Cochrane or your usual Kilburn & Strode advisor.