G 1/23 - Preliminary Opinion

Key points

• The Enlarged Board, in their preliminary opinion, proposes to kind of abandon G 1/92, to the effect that commercial products are always enable (for Art. 83 and Art.54) even if the skilled person can not reproduce them (from starting material) using common general knowledge.
• I.e. to modify G 1/92 as follows:  "The chemical composition of a product is state of the art when the product as such is commercially  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. The same principle applies mutatis mutandis to any other product." (as I understand the preliminary opinion)
• The preliminary opinion in HTML is after the jump (OCR'ed). 
  
  
• The Enlarged Board in preliminary opinion: "In the end, maintaining the formally strict conclusion that non-reproducible products are excluded from the state of the art would lead to even more absurd results. The presumed object of G 1/92 was products which would appear more or less immediately irreproducible to the skilled person, for lack of knowledge of a suitable process and/or a suitable starting material. However, not only such products would be excluded from the state of the art but practically everything under the sun."
• "The skilled person, when trying to reproduce some written or other type of disclosure, can only rely on its common general knowledge. Thus the skilled person can only use starting materials that themselves form part of the state of the art. Maintaining the principle of T 206/83 (which seems to be confirmed in Reasons 1.1 and 1.2 of G 1/92) would seem to limit the skilled person to using only such materials that are themselves state of the art, both for the hypothetical reproduction of the product put on the market (i.e. to verify that the product itself can be state of the art within the meaning of Article 54(2) EPC) or generally to demonstrate for any material it wishes to rely on that it fulfils the requirement for sufficient disclosure within the meaning of Article 83 EPC. It would seem to follow from this premise that only starting materials which are reproducible in some other way can be considered by the skilled person, but not those non-reproducible products that are merely purchased on the market or taken from nature."
• "The most straightforward solution to prevent such absurd outcomes is to assume that the enablement requirement foreseen by G 1/92 is also satisfied by the non-reproducible product in its readily available form, so that a physical product is by definition enabled by being put on the market. The Enlarged Board is well aware that such an interpretation cannot be derived directly from the order and the reasons of G 1/92."

I recommend reading the entire preliminary opinion below.

https://register.epo.org/application?&number=EP11830390&lng=en&npl=false

https://register.epo.org/application?documentId=LZU4SM6SOL8ATGI&number=EP11830390&lng=en&npl=false

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1.  This communication is issued pursuant to Article 13 of the Rules of Procedure of the Enlarged Board of Appeal

(RPEBA). Its purpose is to draw the parties' attention to the legal and factual issues that are currently considered to be potentially relevant to the referral and to give the parties an opportunity to comment on those issues. The Enlarged Board is in no way bound by any opinion expressed herein.

2.  The EPO President duly submitted his comments on the referral. The Enlarged Board also received several observations by the opponent and the proprietor, parties to the proceedings before the referring board, partly on submissions of the other party and partly on the comments on the EPO President. In addition, the Enlarged Board received 15 amicus curiae briefs.

The following non—exclusive assumptions and questions are likely to be addressed in the referral.

The questions on points of law referred to the Enlarged Board

3.  The Enlarged Board does not see an immediate need for the referred questions to be substantially re-drafted. They are also in suitable order. Hence, the questions of law as referred by Board of Appeal 3.3.03 form the basis for the further considerations.

Admissibility of the referral

4.  The Enlarged Board is satisfied that the referral meets the requirements of Article 112 (1) (a) EPC.

5.  The referring board has set out in sufficient detail why an answer to the referred questions is indispensable for its decision on the appeal before it. In its view, its decisive finding on inventive step in the appeal hinges on the question whether the irreproducible product

Engage® 8400 can be considered state of the art within the meaning of Article 54(2) EPC. Answering this depends on the correct interpretation of opinion G 1/92. The Enlarged Board is satisfied that an answer to at least some of the referred questions is required to enable the referring board to reach a decision on the appeal before it.

6.  The referring board also showed that numerous decisions of the Boards of Appeal addressed the interpretation of opinion G 1/92, and came to diverging conclusions on its correct interpretation. The divergence brought to surface various aspects that need to be addressed for arriving at a consistent interpretation of opinion G 1/92.

7.  The referring Board's preliminary analysis on some issues brought up by G 1/92 also does not prejudice the admissibility of the referral.

Question 1, scope and interpretation

8.  The Enlarged Board considers that the first question is the decisive question of the referral. It appears that the answer to Question 1 is expected to clarify that aspect of the case law which the referring board identified as follows: "interpretation of "available to the public" leading to the exclusion from the state of the art within the meaning of Article 54(2) EPC of the product itself (including its chemical composition/internal structure) or only of its chemical composition/internal structure" (T 0438/19, Reasons 11(i)). In the reading of the Enlarged Board, the referring board wants to know whether the not analysable and reproducible product is to be excluded from the prior art per se, as if by way of a legal fiction, or did G 1/92 only mean that the composition or the internal structure of the product did not become state of the art, but otherwise the product itself would still be firmly an instant of the state of the art, and as such potentially disclosing all of its other features that were themselves analysable and reproducible. In the following, the requirement of reproducibility as derivable from opinion G 1/92 will also be mentioned as "enablement requirement".

9.  The referral also seems to leave open the possibility to answer Question 1 by examining the perceived lack of the legal basis for the enablement requirement, as indicated by the referring Board in Reasons 10.4.

10. The question of the analysability of the product alone, i.e. independent of the reproducibility of the product does not appear to be a decisive issue. It appears that throughout the referral, where the referring board discussed the condition of reproducibility, it was always under the assumption that the product can be analysed by the skilled person to the extent necessary for reproducing it. The three aspects identified by the referring board in Reasons 11 (i)-(iii) all seem to hinge on the requirement of reproducibility.

11. Clarification of certain terms in Question 1 appears helpful to understand the scope of the referral.

Product put on the market:

 

12. The referral seems to be applicable to man-made products and naturally occurring products and substances alike, as also observed by the parties. Naturally occurring substances, including simple and standard chemical compositions, can also effectively constitute products placed on the market. Thus, a "product put on the market" need not imply a particularly sophisticated chemical composition.

Reproduce:

13. The Enlarged Board considers that it is undisputed that the ability to physically reproduce the product is meant. In this sense, the term "reproduce" would appear to cover two possibilities: taking the product again in its available form, or manufacturing the given product by way of a suitable method, starting from some starting material which is somehow different from the product itself as put on the market. A third possibility of reproduction is not apparent. It is understood that in practice both options will only be examined as a theoretical exercise in some proceedings where the state of the art needs to be determined, although it is not excluded that parties may also bring physical evidence to support some issue in the generally written and oral proceedings.

14. For the time being, the Enlarged Board proceeds on the understanding that reproduction in the present referral is understood only in the second sense, i.e. a reproduction starting from a different starting material. The

statements made in G 1/92 and the questions of the referring decision only appear to make sense with this understanding of reproducibility. Both G 1/92 and the referring decision assume that the product is put on the market and, as such, is physically available. Assuming that the product is simply taken "as is" for the purposes of reproduction, certain statements in G 1/92 and the referred questions would appear to be superfluous. Therefore, the term "reproduced" would seem to necessarily imply "reproduction by a different route", i.e. not by taking the product in the specific form in which it was put on the market and in which it is readily available.

15. Question 2 is apparently relevant to the decision of the referring Board, but appears to be very much dependent on the answer to Question 1. It seems that the answer to Question 1 will almost automatically provide the answer to Question 2. For the time being the Enlarged Board is not aware of any argument why Question 2 could also be

answered in the negative if the answer to Question 1 is 'No', i.e. when an answer to Question 2 will also be required, as dictated by the condition set by the

referring Board.

16. The Enlarged Board is of the opinion that question 3 needs no further attention for the time being.

Preliminary opinion of the Enlarged Board on the merits of the referral

17. The Enlarged Board sees no reason to dispute that the origin of the case law relying on G 1/92 and underlying the referral goes back to decisions T 206/83 and T 26/85. However, the implicit conclusion on the state of the art status of non-reproducible products that is derivable partly from the answer given by the opinion G 1/92 and partly from its reasons does not seem to be directly supported by either T 206/83 or T 26/85, or their combined reasons. These decisions were concerned with documentary disclosures, and it is not apparent that their findings

would be directly transferable to products put on the market.

18. It is the Enlarged Board's understanding that in the view of the respondent patent proprietor, a reasonable and consistent reading of opinion G 1/92 leads to the conclusion that non-reproducible products are not state of the art within the meaning of Article 54(2) EPC in their entirety.

19. The referring decision already pointed out inconsistencies resulting from the answer of G 1/92 (e.g. Reasons 8.3 to 8.5, further 10.1 to 10.4). The Enlarged Board sees further problems which are so serious that the Enlarged Board does not see how the implications of G 1/92 can be reasonably implemented in the system of the EPC.

20. A consistent application of the notion that non-reproducible products do not constitute state of the art -i.e. they were excluded from the state of the art in the wording of the referred questions - seems to lead to unacceptable results and to irreconcilable contradictions with the general structure of the EPC, the established principles of the law under the EPC, including other undisputed findings of opinion G 1/92.

21. The Enlarged Board is aware that the basis of the enablement requirement for the state of the art under Article 54(2) as set out in T 206/83, i.e. the equivalent level of disclosure for the purposes of Article 54(2), 54(3) and Article 83 EPC, has never been put into question in the case law. However, general acceptance in the case law cannot substitute a lacking legal basis of a legal concept, in particular where other interpretations also appear reasonable. The same applies to those statements in G 1/92 that can be understood in the sense that only products reproducible by the skilled person will become state of the art.

22. The referring Board has convincingly demonstrated that the preparatory works of the Convention (`Travaux') do not support an implied enablement requirement (Reasons 10 and sub-points). The Enlarged Board is not aware of any other source which would negate the conclusions to be drawn from the quoted parts of the Travaux.

23. The Enlarged Board is also not aware of any explanation how decisions T 206/83 or T 26/85 and other decisions relying on them might have derived their findings directly from the Convention or possibly from general principles of law. On the contrary, the Enlarged Board's own considerations lead to diametrically opposed conclusions.

24. The implications of the enablement requirement for the established notions and concepts of the EPC are quite significant. First of all, it is difficult to see how of the art could form part of the skilled person. The products from the state of the Enlarged Board notes that a teaching which is not state of the common general knowledge exclusion of non-reproducible the art would inevitably make such products inaccessible to the skilled person as well.

25. At the same time, the Enlarged Board observes that this consequence of the enablement requirement directly contradicts everyday experience. The assumption that a skilled person would ignore an irreproducible but readily available product obviously cannot hold for any skilled person. Also in the present case, the ENGAGE® 8400 polymer was put on the market as a multi-purpose polymer, useful in various applications. The manufacturer made efforts to

 make it known to all potential customers, as demonstrated by the documents in the file. The customers would buy it for using it for some technical purpose. The assumption that the product as such does not exist manifestly contradicts the facts. The legally not existing but otherwise commercially available product that is even deliberately brought to the attention of skilled persons can only be regarded as a legal fiction. Legal fictions that override facts do exist in law, including patent law, but they should normally be explicitly stated in the law.

26. On the other hand, the enablement requirement inevitably affects the application of Article 83 EPC in respect of formally non-enabled but readily available products. If the principles of T 206/83 are presumed as valid (same level of disclosure for the state of the art and for Article 83 EPC), the extension of the original enablement requirement for documents to products put on the market (as derivable from of G 1/92) would appear to prevent any role of irreproducible products in patent applications. This would directly lead to the result that irreproducible products would effectively cease to exist for the purposes of the EPC. The Enlarged Board is of the opinion that such an extreme result could not have been intended by G 1/92.

27. In the end, maintaining the formally strict conclusion that non-reproducible products are excluded from the state of the art would lead to even more absurd results. The presumed object of G 1/92 was products which would appear more or less immediately irreproducible to the skilled person, for lack of knowledge of a suitable process and/or a suitable starting material. However, not only such products would be excluded from the state of the art but practically everything under the sun.

28. The skilled person, when trying to reproduce some written or other type of disclosure, can only rely on its common general knowledge. Thus the skilled person can only use starting materials that themselves form part of the state of the art. Maintaining the principle of T 206/83 (which seems to be confirmed in Reasons 1.1 and 1.2 of G 1/92) would seem to limit the skilled person to using only such materials that are themselves state of the art, both for the hypothetical reproduction of the product put on the market (i.e. to verify that the product itself can be state of the art within the meaning of Article 54(2) EPC) or generally to demonstrate for any material it wishes to rely on that it fulfils the requirement for sufficient disclosure within the meaning of Article 83 EPC. It would seem to follow from this premise that only starting materials which are reproducible in some other way can be considered by the skilled person, but not those non-reproducible products that are merely purchased on the market or taken from nature.

29. However, to the knowledge of the Enlarged Board, at the beginning of the production chain everything on earth requires materials that are not themselves reproducible but are simply available. Standard chemical elements, which are normally bought from specialty providers, would appear to fulfil the definition of a non-reproducible product in the sense of the referral, as set out in points 12 to 14 above. These providers do not reproduce the materials, but just take them from a natural source. It is not apparent what could remain as state of the art if such standard materials, e.g. pure chemical elements, were fictionally removed from the toolbox of the skilled person. This would seem to affect all documentary disclosures as well - no disclosure would appear to be  enabled, either under Article 83 EPC or under Article 54(2) EPC, without irreproducible but otherwise

readily available materials.

30. Again, such an absurd result could not have been intended by the Enlarged Board when it handed down opinion G 1/92.

31. The other interpretation proposed by the referring board ­the product is state of the art but not its composition, (cf. T 0438/19, Reasons 11(i)) - would still be inconsistent with G 1/92 itself, and would also not prevent similar absurd consequences. Above all, it is difficult to see on what basis certain analysable features of the product could be state of the art, while other analysable features could not. Excluding one analysable feature would seem to inevitably exclude all other analysable features (it being considered as undisputed that non-analysable features do not become state of the art because such features themselves are not available to the public, irrespective of the reproducibility of the product). In that case, it is not clear how the product itself could still be a relevant state of the art if none of its analysable features were known to the skilled person. Nor can a distinction between analysable features (or properties) of a product be made on the basis of the reproducibility of such an analysable feature. As shown in the previous example, the skilled person would inevitably take into account at least one non-reproducible property, namely the composition of those standard materials which must be used by the skilled person in their readily available form. This interpretation must therefore be abandoned at the outset, for lack of an adequate explanation as to why certain analysable features can be treated differently from other, similarly analysable  features. Abandoning the distinction between the features effectively leads back to the same starting premise as before, namely that an irreproducible product must be completely disregarded by the skilled person for the purposes of Article 54(2) EPC, cf. point 18 above. From this it follows that this interpretation cannot be

endorsed for essentially the same reasons as summarised in points 24 to 29 above.

32. The most straightforward solution to prevent such absurd outcomes is to assume that the enablement requirement foreseen by G 1/92 is also satisfied by the non-reproducible product in its readily available form, so that a physical product is by definition enabled by being put on the market. The Enlarged Board is well aware that such an interpretation cannot be derived directly from the order and the reasons of G 1/92.

33. This would mean that such products also belong to the

state of the art, including all their analysable properties and features, e.g. their composition.

34. There seems to be no need to discuss separately the feasibility of the various legal consequences of the enablement requirement, such as the subsequent patenting of a product which has already been put on the market. The state of the art status of the irreproducible product must lead to the result that such a product could not be patented later.

Possible answers to the referred questions

35. The above considerations appear to dictate that Questions 1 and 2 are to be answered essentially as `no' and `yes', respectively, leaving Question 3 moot.

 

 Further procedure

36.  The EPO President and the parties are given an opportunity to comment on this preliminary opinion within 2 months (Articles 9 and 10 RPEBA).