Overview

A referral has been made to the Enlarged Board of Appeal to seek clarification on the law concerning the novelty of commercially available products.   

The case in question relates to an appeal filed against the decision of the Opposition Division to reject an opposition filed against EP2626911. Decisive to the outcome of this case is whether the product ENGAGE® 8400 is state of the art within the meaning of Article 54(2) EPC.  

The referring board noted that G 1/92 – see headnote below (with our emphasis) – has given rise to diverging interpretations by the Boards of Appeal in recent years when it comes to assessing what constitutes the state of the art under Article 54(2) EPC in relation to a commercially available product, which has led to legal uncertainties.  

1. 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 and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
2. The same principle applies mutatis mutandis to any other product.

 Thus, to ensure uniform application of the law the following questions have been referred to the Enlarged Board of Appeal: 

 Referred Questions 

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?
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?
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?

 For more information, please see a link to the EPO Boards of Appeal update here.