Key points
- A few quotes from the observations of the President of the EPO, dated 15.10.2024:
- "Prior art should be understood broadly and Article 54(2) EPC does not make any distinction between products sold or otherwise available on the market, natural substances, documents, or any other disclosure."
- "Should the decision of the EBoA follow the preliminary opinion, the current practice would need
to be revised, by differentiating the assessment of products and naturally occurring substances
on the one hand, and documents, on the other."
- "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market and in which they are readily available."
- Compare recent decision T2510/18, which found a claim directed to a naturally occurring compound to be novel over a man-made plant extract containing that compound.
- Perhaps the EPO's analysis is to be read as: "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market respectively in which they are readily available [in nature]."
- The following observations of the President are likely restricted to the case of products available on the market or naturally occurring substances:
- "“Enablement” or “reproducibility” in the sense as derivable from G 1/92, i.e. understood in the same way under Article 54 EPC as under Article 83 EPC, finds no legal basis in the EPC."
- "requiring “enablement” or “reproducibility” to confirm prior art status, finds support neither in the literal meaning of Article 54(2) EPC, nor in the system of the EPC, nor in the preparatory works for the Convention."
- "requiring prior art to be disclosed in an enabling manner would remove from the state of the art practically “anything under the sun”."
- Cf. the US Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303 (1980) (about patenting a genetically engineered, i.e. human-made, bacteria]: "The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter [under 35 U.S.C. 101] to "include anything under the sun that is made by man.""
- "The purpose of the requirement of sufficiency of disclosure under Article 83 EPC is to exclude hypothetical or speculative applications, which cannot be put into practice."
- "For a product on the market this requirement [i.e. Art.83] is of no relevance, because the product exists and therefore it cannot be hypothetical or speculative"
- I recall that the primary purpose of Article 83 EPC is to deal with cases where the inventor can carry out the invention but would like to keep it a secret and obtain a patent. In particular, Article 83 EPC prevents strategies of proprietors that attempt to provide that after the expiry of a patent (e.g. on a product), the proprietor can still have a de facto monopoly as the sole supplier of the invention on the market based on their trade secrets (e.g., the preparation method for that product; unless and until someone independently invents the same invention).
- "Accordingly, non-reproducible products which are available on the market (or in nature) belong to the state of the art, including all their analysable properties and features, e.g. their composition."
- "non-analysable features" are also possibly part of the prior art, according to the observations: "As regards non-analysable features of a prior art product, excluding them from prior art might lead to similarly problematic results as excluding readily available products from prior art by creating a legal fiction that features which were present in a readily available product do not belong to the state of the art because they could not be analysed at the relevant date. ... Such a legal fiction would ignore the fact that a product was available on the market with all its features and might open the possibility to patent products which have already been put on the market.
- Hence, G 1/23 could cause an upheaval of the case law on novelty and enablement, and prior art in general (also for Article 56 EPC).
EPO
The link to the document is after the jump.
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