G 1/23 – Can the EPO make a product disappear?

Introduction

First, some patent basics. The European Patent Office (EPO) considers an invention to be new if it does not form part of the state of the art¹.  State of the art means everything made available to the public prior to the relevant filing date of the patent application². But what makes something available to the public?  In particular, if a product is commercially available (i.e., it is a product that has been put the market), has it inherently been made available to the public? A recent decision confirms that the answer to this question is ‘yes’. In the article below, we discuss this important decision and provide some practical guidance on its implications.

Overview

In this article, we discuss the Enlarged Board of Appeal’s (EBA) decision in G1/23³ and the consequences of this decision. In summary, the EBA answered the three questions referred to it as follows:

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?  No, such a product is not to be excluded from the state of the art.
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?  Yes, such technical information forms part of the state of the art.
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?”   Answer not required.

Background

By way of background, this decision stems from an earlier decision of the EBA, namely G1/92⁴, in which it was concluded that “[t]he 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 …” and that “[t]he same principle applies mutatis mutandis to any other product” [emphasis added].

However, G1/92 does not provide any guidance as to how information that can be obtained from a product put on the market, or technical information about the product obtained from published documents (such as data sheets, brochures, etc.) and the like, is to be treated, nor the degree to which the product must be reproducible.

As a result, G1/92 has been applied in a non-uniform manner in various Board of Appeal decisions, with some decisions concluding that (i) a product on the market is to be excluded from the state of the art if the product cannot be reproduced exactly (e.g., T1833/18), (ii) analysable properties of a product on the market can form part of the state of the art irrespective of whether a full analysis of the product, so as to enable an exact reproduction of the product, is possible (e.g., T0952/92 and T1540/21) and (iii) a product on the market needs only be reproducible in relation to the features of the claim against which the product is cited (e.g., T1452/16 and T0877/11).

G 1/23

The case under appeal in G1/23 related to a patent directed to a polymer for use as an encapsulating material for a solar cell, the polymer being commercially available prior to the priority date of the patent.  In particular, the appealed decision related to whether the polymer, the method of manufacture of which was not in the public domain, and publicly available technical information relating to the polymer, formed part of the state of the art and thus whether the polymer could form the closest prior art from which an inventive step attack could be launched. 

The patentee argued that the polymer did not form part of the state of the art in its entirety because it could not be exactly reproduced, thus favouring a strict interpretation of G1/92.  To support their position, the patentee referred to a well-established body of case law that supports the view that a non-enabled teaching in a written disclosure means that the teaching of that written disclosure does not form a part of the state of the art under Article 54(2) EPC, and that this same principle should be applied to all types of disclosures including products put on the market.  The patentee also argued that a non-enabled product does not in any way foster progress in technology as the product cannot be reproduced and developed further such that the right to obtain a patent for such a product has not been exhausted.

The opponent argued that G1/92 should be interpreted more broadly such that a product, and all analysable features of the product, put on the market are made available to the public and that such information should not be disregarded simply because the product cannot be exactly, or even partially, reproduced.  The opponent further argued that interpreting G1/92 more strictly would raise various issues including those revolving around the question of how close a reproduction of a product on the market needs to be before the product is deemed to have been reproduced and how this would be assessed objectively, in view of there being an essentially endless number of ways in which the internal structure of the product could be analysed and bearing in mind that the properties of the product could depend on how the product is manufactured and analysed, which could change over time as previously unknown features are identified.

The decision therefore turned on the question of whether it is a valid condition that a product put on the market must be reproducible to form a part of the state of the art.

The EBA took the ‘real world’ view that simply treating a product on the market as if it doesn’t exist directly contradicts everyday experience. In the EBA’s own words, the proposition that the product as such does not exist is “clearly far-fetched and utterly implausible, manifestly contradicting notorious facts”.  The EBA went on to conclude that “reproducible” as introduced in G1/92 must be interpreted in the broader sense of the ability of a skilled person to obtain and possess the product (e.g., buying the product from a supplier) as opposed to the narrower sense of meaning the ability of a skilled person to prepare the product themselves by a route that is different from simply taking the product in its readily available form. 

As a result, the EBA went on to conclude that G1/92 should be interpreted as “[t]he 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 …” [emphasis added], the reproducibility requirement of G1/92 essentially being redundant if one can simply obtain a given product from the market (as opposed to requiring that a skilled person be able to prepare the product themselves). 

Consequences

Perhaps the most significant consequence of the EBA’s decision is that a product put on the market forms part of the state of the art, such that it is not possible to patent such a product if all the claimed features were disclosed by said product. One upshot is that innovators who produce new products and materials should carefully consider patent protection before making the product or material available to the public in any way.

It also follows from the EBA’s decision that all analysable properties of a product put on the market will belong to the state of the art, irrespective of whether the product could be reproduced without simply obtaining it from the market.  Similarly, if a product’s composition could be analysed, then this too would become part of the state of the art, irrespective of whether the skilled person could reproduce it on their own.

It also follows that any technical information about said product which was made available to the public also forms part of the state of the art.

The EBA commented that products which are only available for a limited time are to be treated like any disclosure of this type, such as oral disclosures, prior public use, and the like.  In these cases, there arises a problem of proof and evidence as to what, when and how something was disclosed.  In other words, a publicly disclosed product belongs to the state of the art, even if the product is no longer available to the public.

There are also questions of how this decision might affect inventive step, such as with regard to modifications to a commercially available product, which again will likely be highly fact dependent.  In this vein, the EBA confirmed that a particular method of producing a product could well still be patentable, in view of the particular facts, as a distinction is to be made between the technical teaching that may be derived from the physical product itself and the technical teaching that is required for manufacturing the product.

While the case under appeal related to polymer technology, this decision will impact a broad range of technology areas, potentially including computer-implemented inventions (e.g., distributed computing systems for providing some useful output, where the skilled person may only have access to a part of the overall system).

This decision also harmonises, at least in part, European law with both US and UK law.  More specifically, US law prevents patents from being obtained for products or processes which have been on-sale more than one year after a patent’s effective filing date⁵.  In the UK, a leading decision is Takeda UK Limited v F. Hoffman-La Roche EWHC [2019]⁶, in which it was decided that, as long as a skilled person can obtain enough information from a commercially available product so as to enable them to make their own version of it, then this version of the product forms a part of the state of the art and a patent claim which covers it would lack novelty, irrespective of whether the original product can be reproduced exactly.

[1] Article 54(1) EPC - https://www.epo.org/en/legal/epc/2020/a54.html

[2] Article 54(2) EPC - https://www.epo.org/en/legal/epc/2020/a54.html

[3] https://www.epo.org/en/boards-of-appeal/decisions/g230001ex1

[4] https://www.epo.org/en/boards-of-appeal/decisions/g920001ep1

[5] AIA 35 U.S.C. 102(a) - https://www.uspto.gov/web/offices/pac/mpep/s2152.html

[6] https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2019/1911.html&query=(takeda) 

Nick Davies (UK and European patent attorney)

Ian Lambert (Director, UK and European patent attorney)