New referral to the EPO Enlarged Board of Appeal – G 1/23 ("solar cell")

Europe

On 29 June 2023, the European Patent Office announced that the Technical Board of Appeal 3.3.03 has by interlocutory decision T 438/19 referred three questions to the Enlarged Board of Appeal. The referral is pending under number G 1/23 and the referred questions concern whether a product put on the market should be excluded from the state of the art where its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person.

The referral originates from proceedings relating to European patent 2626911 in which granted claim 1 is directed to a material suitable as an encapsulating material for solar cell, which comprises an ethylene/alpha-olefin copolymer. A decision as to whether the subject-matter of granted claim 1 involved an inventive step ultimately depended on the question of whether the (commercially available) product ENGAGE® 8400 had been made available to the public before the effective date of the patent.

Up until now, the position at the EPO in deciding whether a product as such is available to the public has been led by G1/92, where the Enlarged Board gave the opinion that:

“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”.

However, the Technical Board of Appeal in T 438/19 were of the view that:

“[O]pinion G 1/92 has given rise to diverging interpretations by the Boards of Appeal over the past 30 years, leading to legal uncertainties when it comes to assessing what constitutes state of the art within the meaning of Article 54(2) EPC in relation to a commercially available product. This results in the need to refer a number of questions to the Enlarged Board of Appeal, both to ensure uniform application of the law and because points of law of fundamental importance have arisen. A decision as to under which conditions for a product put on the market before the filing date, as is the case for ENGAGE® 8400, the product itself and partial information about its composition published prior to the filing date is state of the art within the meaning of Article 54(2) EPC is relevant to the present case, as the possibility to use such a product in the analysis of inventive step is decisive to determine the outcome of the case. In addition, the diverging interpretations made of G 1/92 are of considerable practical relevance in a large number of cases as illustrated by the various decisions mentioned above, and a mere theoretical importance is excluded”.

For these reasons, the Technical Board of Appeal decided to refer the following questions to the Enlarged Board of Appeal:

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?”

It is not known yet when an answer from the Enlarged Board of Appeal can be expected. Other cases currently pending before the Enlarged Board of Appeal are referrals G1/22 and G2/22 from January 2022, both concerning entitlement to priority. The Enlarged Board held a hearing and heard arguments in consolidated proceedings on the two referrals in May 2023 and a decision is expected soon.