EBoA G1/23: Product on the market makes it prior art, regardless of reproducibility.

Interpretation of G 1/92, about the enablement requirement for products put on the market for forming part of the state of the art within the meaning of Articles 54(2) and 56 EPC). The Technical Board of Appeal referred the following questions to the Enlarged Board of Appeal (T-0438/19).


OCTROOIRECHT

Gestelde vragen B9 16573 :

Question 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?
 

Question 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?
 

Question 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:

1. 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.

2. 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.

3. In view of the answers to Questions 1 and 2 an answer is not required.

IPPT20250702, EBA-EPO, G1/23, Mitsui Chemicals v Borealis

G-1/23, IEPT20250702, EOB, Mitsui Chemicals v Borealis (SOLAR CELL SEALING MATERIAL, AND SOLAR CELL MODULE)