A referral, G1/23 has been made to the Enlarged Board of Appeal to clarify when a disclosure to the public is an enabling disclosure via the interpretation of Decision G1/92.
The established case law for deciding the extent to which the prior use of a product is “made available to the public” stems from an earlier decision of the Enlarged Board of Appeal (G1/92).
The novelty and inventive step of an invention is assessed at the European Patent Office (EPO) against prior art, which is defined as the “state of the art”. The state of the art is 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. However, any prior disclosure must also be enabled, such that the skilled person could reproduce that disclosed subject-matter using the common general knowledge at the relevant time.
Background
The present case relates to a post-grant opposition that was filed at the EPO by Borealis AG. The opposition was filed against Mitsui Chemicals, Inc.’s European Patent 262911 (European Patent Application No. 11830390.8).
The patent is concerned with an encapsulating material for solar cells, and claims such a material with, inter alia, ‘a content of aluminium element of from 10 to 500 ppm’ (Claim 1 of the patent).
During first instance proceedings, Borealis AG unsuccessfully argued that the patent lacked sufficiency of disclosure and lacked an inventive step. However, during appeal proceedings, the Board of Appeal agreed that Borealis AG’s arguments were not persuasive in relation to sufficiency of disclosure, but they were of the view that there was some merit in the lack of inventive step objections.
The inventive step arguments focussed on whether the prior use of ENGAGE® 8400 polymer should be considered to be prior art, and more specifically the closest prior art. ENGAGE® 8400 was a polymer that was commercially available before the priority date of the patent.
A document that disclosed ENGAGE® 8400 listed a polymer that satisfied all of the requirements of claim 1 of the patent, except for the aluminium content. Specifically, ENGAGE® 8400 was said to have an aluminium content of 4.4ppm, which falls outside the claimed range of 10ppm-500ppm.
Mitsui Chemicals, Inc., relying on G1/92, argued that the commercial product had not been “made available to the public” due to lack or reproducibility, and it was therefore not enabled. Borealis AG argued that it would be unreasonable for a commercially available product to be disregarded as being prior art on the basis that the specific commercial material could not be exactly reproduced.
G1/92 and the divergence of the case law
As mentioned above, G1/92 deals with the question of what was “made available to the public” in relation to the prior use of a product.
G1/92 states 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, the reasons suggest that:
- a distinction is to be made between the product itself, and its composition or internal structure; and
- a product put on the market becomes state of the art and therefore available to the public when its composition or internal structure can be discovered and reproduced without undue burden.
The Board of Appeal were of the view that a different meaning to the term made “available to the public” may have been intended in the travaux préparatoires to the EPC, wherein the Board stated:
“... it would therefore appear that the expression “available to the public” in Art. 54(2) EPC was intended to express the possibility of the public to take note of the prior art, i.e. the accessibility to the public of the prior art, without any requirement as to its enablement” (reasons 10.4).
The Board of Appeal therefore took the view that the definition of made “available to the public” in G1/92 may have overreached what was originally intended.
Referral to the Enlarged Board of Appeal
The Board of Appeal in this case decided that there was ambiguity whether or not part of the product or the whole of the product is part of the state of the art. The Board stated that there were decisions where the composition of a product was not the state of the art, but the product itself was state of the art (T946/04, T1666/16), and decisions where neither the product nor the composition were deemed to be the state of the art (T370/02, T2045/09, T1833/14, T23/11). Thus, the Board took the view that it was necessary to clarify what is meant by the term “made available to the public”.
The questions referred to the Enlarged board are:
- 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?
If the Enlarged Board answer question 1 in the negative, they will provide an upper limit to the applicability of G1/92, and avoid the situation that an entire product is removed from the state of the art merely because the product itself is too complex to analyse without undue burden.
This referral is set to impact on the meaning of the definition of “made available to the public” and how prior art disclosures are interpreted. The outcome may have far reaching consequences for validity attacks during oppositions, and it could be important to monitor the market for products that might be used as a “starting point” for an invention. There is, therefore, pressure on securing an early filing date.
We look forward to hearing where the Enlarged Board of Appeal will land on this issue, which will have potentially long-lasting and serious ramifications for future applications and indeed will serve as instructive case-law for the newly minted Unified Patent Court.
Oppositions are against patents, and not applications. [GU1]