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Preliminary Opinion on G 1/23
Previous case G1/92 referred questions to the Enlarged Board of Appeal regarding whether the chemical composition of a product is made available to the public by virtue of putting the product on the market.
The Enlarged Board concluded in G 1/92 that:
Since G 1/92 was decided, there have been many decisions by Technical Boards of Appeal that have referred to G 1/92. These have led to differing applications of G 1/92. This has resulted in divergent decisions with regard to the interpretation of “available to the public”, the degree of detail required of the analysis of the product and the requirements for its reproducibility.
In T438/19 the proper application of G 1/92 in relation to these three aspects was regarded as essential for deciding the case. This resulted in the further referral to the Enlarged Board of Appeal of the following questions as G 1/23:
In August 2024 the Enlarged Board issued a preliminary opinion on the referral.
In the preliminary opinion, the Enlarged Board has clarified their understanding of certain terms. In particular:
“Product put on the market”
The Enlarged Board is of the opinion that the referral applies to both man-made products and naturally occurring products and substances. Therefore, a ‘product put on the market’ need not imply a particularly sophisticated chemical composition.
‘Reproduce’
The Enlarged Board considers it undisputed that the ability to physically reproduce the product is meant by the term reproduce. In the opinion of the Enlarged Board there are two possibilities for the meaning of the term ‘reproduce’. These are first, taking the product again in its available form and second, manufacturing the given product by way of a suitable method starting from a starting material which is somehow different from the product itself as put on the market. For the time being the Enlarged Board has indicated that it will proceed on the understanding that reproduction is understood in the second sense, namely reproduction starting from a different starting material.
The Enlarged Board has then provided its preliminary opinion on G1/23.
First, the Enlarged Board has distinguished the present referral from G 1/92 by noting that the implicit conclusion on the state of the art status of non-reproducible products that is derivable part from the opinion G 1/92 and partly from its reasons does not seem to be directly supported by either T 206/83 or T 26/85 or their combined reasons. The Enlarged Board has gone on to suggest that the findings of these decisions may not be directly transferable to products put on the market.
The Enlarged Board has also noted that, in the view of the respondent patent proprietor, G 1/92 leads to the conclusion that non-reproducible products are not state of the art within the meaning of Article 54(2) EPC in their entirety. The Enlarged Board goes on to indicate that this interpretation of G 1/92 leads to serious problems.
In the preliminary opinion, the Enlarged Board is of the opinion that the implications of the enablement requirement (that subject matter can only be regarded as having been made available to the public and therefore as art of the state of the art if the information is sufficient to enable the skilled person to practise the technical teaching) for the established notions and concepts of the EPC are quite significant. First, the Enlarged Board finds it difficult to see how a teaching which is not state of the art could form part of the common general knowledge of the skilled person. In addition, the consequence of the enablement requirement directedly contradicts everyday experience. The assumption that a skilled person would ignore an irreproducible but readily available product obviously cannot hold for any skilled person.
In the case leading to G 1/23, the ENGAGE ® 8600 polymer was put on the market as a multi-purpose polymer, useful in various applications and the manufacturer made efforts to make it known to all potential customers. An assumption that the product does not exist (due to being unable to reproduce it) contradicts the facts.
The enablement requirement inevitably affects the application of Article 83 with respect to products that are formally non-enabled but are actually readily available. If the principles of T 206/83 are presumed as valid (that same level of disclosure is required for the state of the art and for Art. 83 EPC), the extension of the original enablement requirements for document to products put on the market would appear to prevent any role for irreproducible products in patent applications. This would lead to the result that irreproducible products would cease to exist for the purpose of the EPC. The Enlarged Board is of the opinion that such an extreme result could not have been intended by G 1/92.
The other interpretation proposed by the referring board, that the product is state of the art but not its composition, would still be inconsistent with G 1/92 itself and would also not prevent similar absurd consequences.
In the Enlarged Board’s opinion, the most straightforward solution to prevent such absurd outcomes is to assume that the enablement requirement foreseen by G 1/92 is also satisfied by the non-reproducible product in its readily available form so that a physical product is by definition enabled by being put on the market. This would mean that such products also belong to the state of the art including all their analysable properties and features, for example, their composition.
This leads to possible answers for the referred questions of 1. No, 2. Yes and the third question is then rendered moot.
At present, there is still some more time for the interested parties to make further representations to the Enlarged Board of Appeal. Further, the opinion from the Enlarged Board is merely a preliminary opinion and may be subject to change. However, at present the preliminary opinion indicates a divergence from G 1/92.
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