Referral to the Enlarged Board of Appeals – G1/23 Solar Cell
1. In the appeal case T438/19 questions arose regarding the criteria to be applied concerning the definition of the state of the art.
The questions are subsequent to the established case law (G1/92) according to which the chemical composition of a product belongs to the state of the art if the product itself is available to the public and can be analyzed and reproduced by a person skilled in the art, regardless of whether there are special reasons for analyzing the composition. The same principle applies mutatis mutandis to all other products.
2. The question at hand relates to a polymer found on the market. The respondent argued that the availability to the public would require that the skilled person is able to produce the exact polymer and this without undue burden. Reverse-engineering of a commercial polymer without knowledge of the synthesis conditions requires an extensive research program and constitutes an undue burden.
3. As the application of the established case law is divergent, the Technical Board of Appeal has referred the following questions to the Enlarged Board of Appeal (referral pending under G1/23 “solar cell »):
- 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?
4. The question referred to the Enlarged Board of Appeals will shed more light on the definition of the scope of prior art according to the EPC. More information is available at:
https://www.epo.org/law-practice/case-law-appeals/communications/2023/20230629.html.
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