G1/23 Deep Dive: From Shelf to State of the Art - The Practical Implications of G1/23

On the 2^nd July, the Enlarged Board of Appeal of the European Patent Office handed down their decision in the referral of G1/23. In this final article of our series, we’re taking a deep dive into what the Enlarged Board actually decided and what are the practical implications for patent practitioners. If you’d like to refresh your memory on how we got here, make sure you check out our background article on this referral, and the decision announcement.

What was the issue?
As you’ll remember, the central issue in G1/23 is to what extent a product on the market or its composition is part of the state of the art if that product cannot be easily reproduced using information in the public domain. We can summarise the main referred question as:

Can a product be excluded from the state of the art simply because its composition or internal structure was not reproducible or analysable by a skilled person before the priority date?

The previous decision of the Enlarged Board, the now thirty-year-old G1/92, had held 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. However, in the years since this decision, the Boards of Appeal had split on how to apply this to products whose internal structure cannot be easily reproduced. Are those products excluded from the state of the art completely, even if the skilled person can buy and physically inspect them?

The Decision
The written opinion covers 55 pages, compared to a mere 7 for G1/92, as the Enlarged Board grappled with both possible interpretations of the referred questions and what consequences would flow from adopting either of them. It was notable that, having identified divergence in the case law, the Enlarged Board did not rely on case law or other legal sources and instead essentially went back to first principles.

Regarding the first referred question, the Enlarged Board devoted a significant portion of the decision to critiquing the positions of the two parties to the case. The patent proprietor, seeking to ensure that the ENGAGE 8400 polymer was not part of the state of the art, argued for a strict interpretation of G1/92, meaning that a product that cannot be reproduced is excluded from the state-of-the-art entirety. Indeed, this was in line with the decision taken by some previous Boards (e.g. T 1833/44, T0023/11). The Enlarged Board reasoned that this proposition was flawed because, as they put it, there are no products on Earth that cannot, in the end, be reduced to materials that cannot be reproduced. As an example, the Board noted, there being no way of reproducing crude oil, the proprietor’s position would have removing all products derived from crude oil from the state of the art. For the Enlarged Board, this position was “clearly far-fetched and utterly implausible”.

The alternative interpretation put forward by the referring Board was met with equal indignation. Several Boards of Appeal had instead interpreted G1/92 to mean that if a product’s composition could not be determined, then the composition would be excluded from the state of the art, even if the product itself was not. The Enlarged Board considered this an ‘obviously absurd proposition’ since it would result in a legal fiction where a product is taken to have no composition at all.

Those familiar with the Boards of Appeal will appreciate by now how unusual it is for the Enlarged Board to express itself in such strong terms.

In the end, the Board arrived at the same conclusion it had indicated in its preliminary opinion, that ‘G1/92 cannot be maintained in its entirety. The Board instead concluded that the “absurd” results discussed already were avoided by removing the reproducibility requirement from the holding of G1/92. The Board effectively revised G1/92 by stating “The chemical composition of a product is 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.” The Enlarged Board made it clear that “available to the public” included simply buying it with no requirement that the product be made again.

The Enlarged Board then applied this test to the referred questions, which were answered:

• I. 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.
• II. 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.

In answering the first question, the Enlarged Board have drawn a distinction between the product itself and its ‘composition or internal structure’. Simply being able to buy the product does not mean the details of the composition or internal structure are part of the state of the art. However, as the Board put it, “all analysable properties of the product put on the market will belong to the state of the art”. Also, while the answers to the questions do not explicitly say so, the Board explained in the decision that in considering what is analysable, the relevant question is still what the skilled person could determine without unreasonable (i.e. undue) effort. That test is familiar from G1/92, except what matters now is what the skilled person can analyse without an undue burden, not what they can reproduce. This decision is particularly notable given just how rare it is for the Enlarged Board to overrule one of its previous decisions.

It is interesting that the Board appeared to spot the conundrum that their answer sets up. Does “undue burden” exclude anything requiring more than standard techniques, or is the question simply what is technically feasible, irrespective of financial or technical considerations? Unfortunately, the Board left us with this particular cliffhanger, and it will likely be a key point to be argued over in future cases before the Technical Boards.

In answering the second question, it seems that any features which are non-analysable under the first question would however, become state of the art if they are mentioned in technical information about the product. For example, even if the internal structure of the ENGAGE 8400 polymer could not be easily determined, if it was described in a technical brochure about the product, that would become part of the state of the art even if it wasn’t actually analysable as such. This makes for a significant shift in EPO practice, and it seems somewhat at odds with the EPO’s normal requirement that a disclosure be enabled (e.g. in oral disclosures). We’ll be watching closely to see if this marks a bigger shift in the EPO’s approach as this decision gets applied.

Key Practice Points

‘Analysability’ is the new ‘reproducibility’
The key take-home message is that G1/23 means all of the properties of a product which can be analysed by a skilled person are now state of the art, irrespective of whether the product itself is easily reproducible. In the case of the ENGAGE 8400 polymer, that would seem to mean that the polymer composition, which can be determined by analytical methods, is prior art. This has the practical effect of making more products prior art. It is now more important than ever to file a patent application before making a product publicly available or publishing related technical documentation.

There is no European ‘on-sale’ bar
When the Enlarged Board first announced that it has taken up this referral, there was much discussion about whether we would see the introduction of a ‘US-style’ on-sale bar in Europe. That has very much not happened yet. Those familiar with the US on-sale bar will know how complex it is, with much analysis of what constitutes a sale. In the 55 pages of this decision the Enlarged Board did not deal with interpretation of “on the market” and it is possible we might see some new cases trying to fill that grey area.

What can be analysed without undue burden?
In effect, what G1/23 has left unanswered is exactly what it means for the skilled person to be able to analyse a product. In leaving that question for another day, the Enlarged Board have shifted the battlefield between patent proprietors and opponents. We expect those opposing at the EPO to argue that ‘undue burden’ means what is technically feasible in the state of the art, regardless of the cost or commercial considerations. On the other hand, those defending their patents are likely to argue that it means what is routine in the field in question, and only at the priority date of the application.

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