Key points
- The Board refers the following question to the Enlarged Board: "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?"
- I like to think of this issue as the Coca-Cola ® question, see my post about T 1833/14 (from 2018). In fact, p.20 of the reasons refer to Coca-Cola.
- Two further questions are referred: "2. If the answer to question 1 is no [i.e. the product is prior art], 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 [no prior art] or the answer to question 2 is no [brochure is only prior art if product can be reproduced], 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?"
- Claim 1 is directed to an ethylene/alpha-olefin copolymer, not to a solar cell also the title of the referral suggests. Unsurprisingly to readers of this weblog, the polymer is defined in terms of 6 parameters, being also results to be achieved. Incidentally, this is entirely conventional in this field because otherwise, basically, all ethylene/alpha-olefin copolymers are the same in terms of chemical composition. The Board carefully explains this aspect in point 13.1 of the reasons.
- The Board is of the view that "a decision as to whether the subject-matter of granted claim 1 involved an inventive step ultimately depended on the question of whether the (commercially available) product ENGAGE® 8400 had been made available to the public before the effective date of the present patent." D5 is a document "ENGAGE® 8400, Technical Information, Dow"; D5a is a Product Information sheet about the same polymer. D1, Example 3, describes that ENGAGE® 8400 is suitable for the manufacture of solar cell modules.
- "According to the appellant [opponent] ENGAGE® 8400, an ethylene/1-octene copolymer having an MI of 30 g/10 min and a density of 0.870 g/cm**(3), fulfills all the requirements of claim 1, with the exception of the content of aluminium"
- "While the respondent [proprietor] does not dispute that ENGAGE® 8400 was commercially available and fulfilled all properties of claim 1 as granted, with the exception of the content of aluminium, it argued, relying on paragraph 1.4 of the Reasons for opinion G 1/92 and decision T 23/11, that the commercial product ENGAGE® 8400 had not been made available to the public within the meaning of Article 54(2) EPC."
- "diverging approaches by the Boards of Appeal exist with regard to the application of opinion G 1/92"
- G1 /92 r.1.4 reads as follows: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. 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".
- A possible interpretation is that: "a product put on the market becomes state of the art and therefore available to the public only when the composition or internal structure of the product can be discovered and reproduced without undue burden"
- However, " the Enlarged Board stressed in decisions G 2/88 and G 6/88 that the word "available" within the meaning of Article 54(2) EPC carried with it the idea that, for lack of novelty to be found, all the technical features of the claimed invention in combination must have been communicated to the public, or laid open for inspection. The mere fact that a product was put on the market would therefore appear to result in that product being laid open for inspection (and therefore "available")".
- "[T206/83 and T 26/85] convey the idea that the enablement of a disclosure is a necessary condition for this disclosure to have been made available to the public within the meaning of Article 54(2) EPC. In other words, a disclosure which is not enabling would not be comprised in the state of the art defined in Article 54(2) EPC. This appears also to be the rationale underlying the reasoning of the Enlarged Board in point 1.4 of the Reasons for opinion G 1/92."
- The referral decision is detailed, also studying the Travaux and recent case law. The full text can be found below.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/06/g-123-referral-novelty-of-commercial.html
