EPO’s Enlarged Board of Appeal Decision G1/23 is published

The EPO’s Enlarged Board of Appeal published earlier this month its decision on this important matter that relates to the issue of novelty of European patents. While the outcome of the case is simple to understand, the reasoning and the implications of the case are worth considering in more detail.

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Overview

The EPO’s Enlarged Board of Appeal published earlier this month its decision on this important matter that relates to the issue of novelty of European patents. In particular, they addressed the question of whether a product that was commercially available, yet not reproducible, could constitute a novelty-destroying disclosure. In short, they decided that a non-reproducible, commercially available product can be prior art. This effectively establishes an on-sale bar in Europe, a concept familiar to our US colleagues – in other words, if you sell a product, it cannot then be patented at a later date, even if it is difficult to reverse engineer or reproduce. There is a key difference though in that, in the US, confidential sales count, whereas, in Europe, confidential sales do not – the sale has to put the product into the public domain for it to become prior art.

Background

The whole issue arose from a point of interpretation deriving from a 1990s Enlarged Board of Appeal Decision, G1/92.  In that case, the Enlarged Board indicated that a product is only “made available to the public” if the skilled person would have been able to “analyse and reproduce the product, using common general knowledge”. This was interpreted, quite reasonably, by some EPO Boards (and many EPO practitioners) for many years, to mean that if a product was sold, but could not be reverse-engineered or reproduced from the knowledge available in the public domain, it was not prior art.

Examples of products that can be very difficult to reverse engineer and reproduce include certain polymers or catalysts, whose properties can depend heavily on their methods of synthesis – if a company keeps a method of synthesis confidential, but sells the product, its competitors may not readily be able to make the product. This meant that, even though such some chemical products were on the market, they could still be patented at a later date. On the one hand, this is reasonable if you wish to encourage people to use the patent system and be rewarded (with a patent monopoly) for putting information on how to make a product into the public domain (in the patent specification); additionally, it reflects the enablement requirements for disclosing a new product in a patent application (i.e. it is not simply enough to say in a patent application that a new product has been bought – the patent application should give a method of synthesis for the new product). On the other hand, it could be seen as ignoring the reality that when a product is readily obtainable for a particular purpose, it can be used without having to make it, it exists in the real world and therefore is ‘available’.

In G1/23, the patentees were trying to patent a polymeric material and they defined the material by various properties of the polymer. A piece of prior art mentioned a commercially available polymer, which had all but one of the relevant properties in the claim, but there was no publicly available information on how to make this polymer. The question then arose of whether this disclosure of the commercially available polymer could be ignored for prior art purposes.

The reasoning of G1/23

The reductio ad absurdum argument of the opponent won out in this case. The argument went as follows. If you take the premise that, to be prior art, a product must be ‘reproducible’, i.e. able to synthesized (by humans) from other substances, then this logically should apply to any starting materials, i.e. they themselves should be reproducible from other substances. However, if taken back to the most basic of starting materials, chemical elements, they are not ‘reproducible’, in the sense that we do not have ways (yet) to synthesize some elements from others – “constructing atoms freely is beyond the reach of the current state of technology, hence of the skilled person”. And therefore the chemical elements, and everything made from them, should be excluded from the prior art, which is absurd.

The patent proprietor argued that it is justifiable that some starting materials, like chemical elements, and also some naturally occurring substances such as oil, need not be ‘reproduced’ by the skilled person, and that it would be accepted that they are still ‘available’, but it is the more complex substances made from them that require a method of synthesis to be known. However, the Board saw this as effectively supporting their own argument, since, if it was justifiable from some materials to be ‘available’ without a method of synthesis being known, then this should be applicable to all materials.

The patent proprietor argued heavily that the result of allowing commercially available, but non-reproducible, products to be prior art would cause difficulty, since a company could simply stop making such a product and then it would cease to be available – in that situation, was the product available or not? The Board did not see this as a convincing point, since it is normal for other disclosures to be temporary, yet still be considered prior art. This can arise with internet and public prior use disclosures and it is accepted that they are still part of the public domain. The Board indicated that if there were any difficulty in a product disappearing from the market, it is a difficulty in the question of proof, but that is a lawyers’ problem, not the skilled person’s problem.

All in all, the Board made it very clear that they considered it completely justifiable for a non-reproducible product to be considered ‘available to the public’ for the purposes of novelty. They also considered that any technical information about the product (e.g. in product literature) would form part of the prior art.  The Board were more careful though to point out that the relevance of such a product to inventive step would depend on the circumstances – both on the product in question and the invention under examination: “there are no formal and strict rules as to how a non-reproducible but publicly available product or any of its properties can be taken into account when inventive step is examined.”

The implications

The case generally removes the possibility of patenting in Europe, at a later date, exactly the same product that has been previously commercially released. However, it is less clear that it removes the possibility of patenting modifications of that product. This will depend entirely on whether the modifications would have been obvious and if the skilled person could have reached them with their common general knowledge.

From this author’s perspective, if there is no information in the public domain on how to make a particular commercial product, it seems artificial to suggest that the skilled person could use such a commercial product as a starting point when assessing inventive step for a patent relating to a chemically modified version of it. It is one thing to simply add an additive to such a product (and an analogy the Board gave was adding lemon juice to Coca Cola), but it is quite another to make a chemical modified version of the product, which necessarily requires the skilled person to devise a synthetic route to the end product. In that instance, when assessing inventive step, it would be more realistic for a skilled person to start from another product for which a synthesis method is known. In that instance, the synthesis route may not be trivial and the prior art product (for which the synthesis is known) may differ in more features to the patented product (compared to the prior art product for which the synthesis is not known), i.e. making it a considerable leap for the skilled person to make, and therefore not so obvious. It would only seem right that a company that has devised an alternative to a non-reproducible one on the market should be rewarded with a patent if they have put in considerable effort into researching a synthesis route and put that into the public domain in the patent specification.

In terms of other implications, while the general principle that a previously sold product forms part of the ‘state of the art’ is clear, proving this is a fact in some cases could be difficult, particularly if the product has disappeared from the market and there are few, perhaps no, samples of it available. There is also the question of the nature of the sale of a product. To what extent does knowledge of a commercially available product need to be known? Some products are specifically produced by one company for another, but outside of the two companies, the existence of the product may not be known – in that instance, is the product ‘available to the public’?

There is also the question of the burden of proof. If an opponent is alleging a patented product is obvious over a commercially available, yet non-reproducible product, shouldn’t the opponent have the burden to show that the skilled person could make the patented product readily (either from the commercially available product or from another one for which the synthesis is known)?

Another question that is left open  by the Enlarged Board is whether ‘hidden’ features, i.e. features that could not be analysed at the time of selling the product, could become basis for a future patent.  The Enlarged Board in G 1/23 seemed to agree with the 1990s decision that a chemical composition needs to be analysable for it to enter the public domain. Accordingly, if characterisation techniques were to develop and a new method of analysis then reveals a ‘hidden’ feature in a previously sold chemical composition, is there scope for patenting the same product but defined by that ‘hidden’ feature? On the one hand, this hidden feature would seem very much a discovery, and those are not patentable before the EPO; additionally, as a matter of principle, it would seem wrong to be able to use that later patent to stop sales of a product that had been on sale since before the patent was filed. On the other hand, it could be argued that the hidden property was not in the public domain, since no one could have possibly known about it, and therefore the person or company who has devised a way to make the product with the hidden property – which could be useful in some way – should be rewarded with a patent for their efforts. That said, as described above, it will probably more likely come down to a matter of proof – showing that a product sold many years ago had a particular hidden property could be difficult.

Finally, the case raises interesting questions of sufficiency in patent applications. Up to now, the principles of enablement of prior art have reflected the requirement for inventions disclosed in patent applications. Taking that to be the case, if you took the logic G1/23, you could file a patent application for a new chemical product, and not say how it is made, but only give a commercial source, which became available on the day of filing (so not prior art). But this would seem to go against the general principle of patents requiring methods of synthesis for new chemical products – that is the valuable information the patentee puts in the public domain as part of the deal of obtaining a patent.

In short, while the conclusion of the case seems simple, the implications could be far more complex, and we may see the situation being revisited in years to come to clarify the limits of the law.

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This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.