T 1833/14 - Commercially available but not anticipated

Key points

• In this opposition appeal about a public prior use, the Board deals what I call the "Coca Cola" question: does a product that is commercially available and that falls within the claim, take away novelty of the claim, if the recipe for that commercial product is not known (e.g. is Coca Cola still novel under Article 54 EPC?)
• " In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent."
• The Board also does not admit a document D14: "Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 [], there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings." 
• 2019.10.02: typo's corrected. The decision is added in the GL 2019 G-IV, 7.2.1.

EPO T 1833/14 -  link

Reasons for the Decision

Main request (patent as granted)

1. Novelty

1.1 The sole novelty objection put forward in appeal by the appellant is against granted claim 1 in view of the alleged public prior use in respect of product Rigidex®P450xHP60.

1.2 Although all the concerns identified in the Board's communication (see section IX above) regarding the relationship between the documents relied upon by the appellant (sections 6.2.1, (a) to (e)) and/or the nature of the product disclosed in each of those documents (sections 6.2.2, (a) to (d)) were not removed by the appellant's arguments, it is not necessary for the Board to deal with those issues in details in view of the conclusion drawn in sections 1.3 to 1.9 below.

1.3 According to G 1/92 (see the headnote), one of the conditions for a product to belong to the state of the art is that it can be reproduced by the skilled person. In section 1.4 of the reasons it is in particular indicated that: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art" (emphasis by the Board).

1.4 In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent.

1.5 In the present case, independently of whether a sample of Rigidex®P450xHP60 was publicly available before the filing date of the patent in suit and whether it fulfilled each of the features specified in granted claim 1, a condition to be fulfilled is therefore that the skilled person knew how to prepare said product without undue burden.

1.6 In that respect, it is generally known in the field of polymers and it was not contested by the appellant that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer and of any product derived from it. Indeed, in the polymer field, in which products and compositions are often defined by means of parameters, the requirements of sufficiency of disclosure is analysed with particular care and is considered to be met in such cases if the application or the patent, when necessary supported by the common general knowledge, discloses the method of preparation of the polymers (in particular by means of the catalyst system, the type of reacting system and the process conditions) which results in products and compositions with the required parameters. The same criteria must therefore apply to the reproducibility without undue burden of a product on the market.

Considering that it was neither shown by the appellant that any information in that respect was available to the public before the filing date of the patent in suit for the product under scrutiny, nor that such information belonged to common general knowledge, it is concluded that the mere disposal of a sample of Rigidex®P450xHP60 was not sufficient for the skilled person to be able to prepare it.

It is further noted that in its notice of opposition (section on sufficiency of disclosure) the appellant [opponent] argued that the combination of parameters defined in granted claim 1 could only be obtained using a specific catalyst system, which is in line with the above conclusion that without knowing among others which catalyst system was used for preparing Rigidex®P450xHP60, the skilled person would not be in a position to prepare said product without undue burden.

1.7 In its letter of 12 October 2017 (page 5: heading "6.3") the appellant [opponent] argued that it would not have been difficult for the skilled person to prepare a composition having the features of the public prior use product which were specified in claim 1. However, this is not the issue at stake. Rather, in order for the product to be state of the art, the question is whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1, but exhibiting e.g. also the same properties as indicated in D2a). It was however not shown by the appellant that this was the case. To the contrary, the appellant stated in the above identified passage of its letter dated 12 October 2017 (see last full paragraph) that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

1.8 During the oral proceedings before the Board the appellant argued that Rigidex®P450xHP60 was very similar to the products prepared in D6 and that the skilled person could adapt the teaching of D6 in order to prepare a composition according to granted claim 1. However, there is no evidence on file that the specific product supporting the objection of public prior use, namely Rigidex®P450xHP60, was prepared according to the teaching of D6. There is also no evidence on file that a product prepared according to D6 may show the same combination of properties as Rigidex®P450xHP60 (see e.g. D2a). Therefore, the appellant's argument does not convince.

1.9 During the oral proceedings before the Board the appellant submitted that it would not be reasonable to consider that a product falling under granted claim 1 which was in the public's hands before the filing date of the patent in suit could be held not to anticipate the subject-matter of said patent.

However, this is the conclusion reached in view of the condition which is derivable from decision G 1/92 (as explained in sections 1.3 and 1.4 above), namely that in order to be part of the prior art pursuant to Article 54(2) EPC, a public prior use must also amount to an enabling disclosure. A similar conclusion was already reached e.g. in T 977/93 (OJ EPO 2001, 84: sections 3, 4, 11 and 13 of the reasons), T 370/02 (sections 8.6 to 8.8 of the reasons), T 2045/09 (sections 29, 31 and 32-38 of the reasons) and T 23/11 (sections 2.1 to 2.5 of the reasons). The same line of argumentation was also adopted in T 301/94 (sections 3.3 to 3.5 of the reasons), albeit the conclusion in that case was that the alleged public prior use was part of the prior art because it could be reproduced without undue burden. Therefore, the appellant's argument is not persuasive.

1.10 In view of the above, it cannot be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. Under those circumstances, a sample of Rigidex®P450xHP60 does not form part of the prior art pursuant to Article 54(2) EPC and cannot anticipate the subject-matter of the granted claims.

1.11 For those reasons, the appellant's sole objection pursuant to Article 54 EPC against granted claim 1 is rejected.

[...]

Admittance of the late-filed document D14

3. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted with letter of 12 October 2017 the new document D14. Considering that the filing of that document represents an amendment to a party's case pursuant to Article 13(1) RPBA, the admission to the proceedings of D14 is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.

3.1 Regarding the late-filing, it was not contested by the appellant that that document was available to the public and could have been retrieved earlier.

The appellant did not justify why D14 was only submitted at such a late stage. Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 (see section II above), there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings.

Also, it was not shown that any surprising development of the case had occurred, which could have justified the filing of D14 in response thereto.

3.2 There is no doubt that lack of novelty does not immediately appears from the document as such, as the appellant argues why the missing features (Mz(XCS) in particular) should be implicitly disclosed and should have been provided by the respondent (who was under no obligation to do so).

3.3 The fact that in the parallel case T 1766/14 (see section II above) the document was cited in the preliminary opinion of the Board for its relevance on either sufficiency of disclosure or lack of novelty (see sections 6.1.1.b and 7.2 of the Board's communication dated 18 July 2017 in T 1766/14) also does not speak in favour of the admittance of the document. Firstly the facts in both cases are different, e.g. the missing feature is not the same (Mz/Mw in T 1766/14). Secondly also the objections related to the document are different, as in T 1766/14 D14 (referred to as D10 therein) is pertinent also to sufficiency of disclosure. This means that, should D14 be admitted to the proceedings, a new and possibly complicated issue related to sufficiency of disclosure could have had to be dealt with for the first time in appeal (the findings on sufficiency of disclosure in the decision under appeal were never disputed by the appellant in the current appeal proceedings).

3.4 In view of the above, the admission to the proceedings of D14 would raise new issues, which would require to provide sufficient time for the respondent to prepare an appropriate line of defense. This, however, runs counter to the need for procedural economy. Besides, it makes no doubt that those new issues could not reasonably be expected to be dealt with by the respondent or the Board without adjournment of the oral proceedings.

3.5 For those reasons, the Board does not admit D14 to the proceedings pursuant to Articles 13(1) and (3) RPBA. | |