Key points
- The referral decision in case G 1/23 refers to the "Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961 (LT 234/82, Section 5, IV/2767/61-E)" and cites that document in English.
- This slightly puzzled me because, in 1961, English was no official language of the Working Party - England was no EU member then. However, it turns out that an English translation of the minutes of that meeting is contained in the "per article" collection of the travaux préparatoires to Article 54 EPC. Even though that translation can not be found in the "per document" travaux. Possibly, the translation was prepared in 1982?
- The document discussed at that meeting is the Haertel draft, which is available in German and French only (in the published travaux). I'm not aware of a published English version of it.
- Linking to the individual PDF files of that travaux is no longer possible after the update of the EPO website, it seems.
Meaning of "available to the public" according to the Travaux Préparatoires to the EPC
10. In order to understand the legislative intent underlying the expression "available to the public", it appears helpful to consult the historical documentation related to the genesis of Article 54 EPC, whose parts mentioned below have been identified as particularly relevant.
10.1 Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961 (LT 234/82, Section 5, IV/2767/61-E)
According to the minutes of the meeting on 18 April 1961 in which Article 14 of the Preliminary Draft concerning novelty was discussed (page 12, second paragraph), "the Working Party decided to adopt the wording "available to the public". The word "available" emphasised the possibility of taking note of the invention." According to the third paragraph on the same page, "the Chairman stated that an invention was only disclosed if, by virtue of the disclosure, a person skilled in the art could carry out the invention. It did not seem necessary for this principle to be expressly stated in the Convention. If the matter made available to the public did not allow the invention to be carried out, the invention remained novel."
The Working Party instructed the Drafting Committee to draw up the text of paragraphs 1 and 2 of Article 14 in accordance with the results of the discussions (page 12, fifth paragraph of the document). The text of paragraphs 1 and 2 of Article 14 defining novelty was adopted in the meeting of 20 April 1961 (page 47). Its wording on page 5 of document IV/2498/1/61-E is essentially the same as that of Article 54(2) EPC. It reads:
"(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall comprise everything made available to the public before the date of filing of the European patent application, by means of a written or oral description, by use or in any other way."
That text of the Working Party is the same (apart from a reordering of the wording in paragraph (2)) as that comprised in the Preliminary Draft Convention for a European System for the Grant of Patents (BR/6/69, page 19).
10.2 Proceedings of the 5th meeting of the Patents Working Party held at Brussels from 2 to 18 April 1962 (LT 234/82, Section 4, 3076/IV/62-E)
The relevant passages of that document are the last paragraph of page 141 and the three first paragraphs of page 142 which read:
"Regarding paragraph 2 of Article 14, Mr. Fressonnet drew attention to the French proposal which specified that the prior art had to be made available in a manner adequate to enable a skilled person to produce the subject-matter of the publication.
Mr. van Benthem pointed out that that proposed wording amounted to a change of substance. The condition proposed by Mr. Fressonnet was to be found in the Netherlands law and in practice it was a very strict criterion. Very often the descriptions given in patent applications were not sufficient to carry out the inventions. If the French wording were adopted, such prior applications and patents could not be regarded as forming part of the state of the art. Furthermore, there were also purely theoretical publications which could not technically be carried out directly. They were, however, still part of the state of the art.
Mr. Fressonnet said that it was not the intention of the French delegation to change the substance of Article 14(2). He therefore agreed with the majority of the Working Party.
Article 14 was adopted without any change beyond those agreed on earlier."
10.3 Proceedings of the 10th meeting of the Patents Working Party held at Brussels from 16 to 27 September 1963 (LT 234/82, Section 11, 9081/IV/63-E)
The relevant part of that document is to be found on page 66 (highlighting by the Board). It reads:
"AIPPI wanted formal proof to be required of the content and date of oral disclosure.
UNICE felt that a general description of an inventive idea should not destroy its novelty and proposed the following wording: "the state of the art shall be held to comprise everything made available to the public, in a manner sufficient to enable the invention to be carried out ... ". Finally UNION would like the term "public" to be defined.
The views of the Austrian Government were similar to those of UNION.
The Chairman summarised the problems regarding paragraph 2:
1. Additional evidence is wanted in connection with oral disclosure.
2. Further definition is wanted of the description.
3. Further definition of the word "public" is also wanted.
Regarding the first problem, the Working Party was unanimous that there was no need for specific evidence regarding oral disclosure.
The question could safely be left to the courts which were used to such evidence.
The Working Party also rejected the second suggestion. It preferred the current, more objective wording."
10.4 Based on the above documents relating to the genesis of Article 54 EPC, it would therefore appear that the expression "available to the public" in Article 54(2) EPC was intended to express the possibility of the public to take note of the prior art, i.e. the accessibility to the public of the prior art, without any requirement as to its enablement. The requirement to reproduce the product without undue burden in section 1.4 of the Reasons of opinion G 1/92 would appear to go beyond the intended meaning of "available to the public" in Article 54(2) EPC.
10.5 This could be seen to imply that any element of the composition or internal structure of a product put on the market which can be discovered by the skilled person per analysis is state of the art within the meaning of Article 54(2) EPC, irrespective of the reproducibility of the product by the skilled person.
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