G 1/23 - Referral - Novelty of commercial products - Solar Cell ( T 0438/19)

Key points

•  The Board refers the following question to the Enlarged Board: "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?"
• I like to think of this issue as the Coca-Cola ® question, see my post about T 1833/14 (from 2018). In fact, p.20 of the reasons refer to Coca-Cola. 
• Two further questions are referred: "2. If the answer to question 1 is no [i.e. the product is prior art], 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 [no prior art] or the answer to question 2 is no [brochure is only prior art if product can be reproduced], 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?"
• Claim 1 is directed to an ethylene/alpha-olefin copolymer, not to a solar cell also the title of the referral suggests. Unsurprisingly to readers of this weblog, the polymer is defined in terms of 6 parameters, being also results to be achieved. Incidentally, this is entirely conventional in this field because otherwise, basically, all ethylene/alpha-olefin copolymers are the same in terms of chemical composition. The Board carefully explains this aspect in point 13.1 of the reasons.
• The Board is of the view that "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 present patent." D5 is a document "ENGAGE® 8400, Technical Information, Dow"; D5a is a Product Information sheet about the same polymer.  D1, Example 3, describes that ENGAGE® 8400 is suitable for the manufacture of solar cell modules.
• "According to the appellant [opponent] ENGAGE® 8400, an ethylene/1-octene copolymer having an MI of 30 g/10 min and a density of 0.870 g/cm**(3), fulfills all the requirements of claim 1, with the exception of the content of aluminium"
• "While the respondent [proprietor] does not dispute that ENGAGE® 8400 was commercially available and fulfilled all properties of claim 1 as granted, with the exception of the content of aluminium, it argued, relying on paragraph 1.4 of the Reasons for opinion G 1/92 and decision T 23/11, that the commercial product ENGAGE® 8400 had not been made available to the public within the meaning of Article 54(2) EPC."
• "diverging approaches by the Boards of Appeal exist with regard to the application of opinion G 1/92"
• G1 /92 r.1.4 reads as follows: "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".
• A possible interpretation is that: "a product put on the market becomes state of the art and therefore available to the public only when the composition or internal structure of the product can be discovered and reproduced without undue burden"
• However, " the Enlarged Board stressed in decisions G 2/88 and G 6/88 that the word "available" within the meaning of Article 54(2) EPC carried with it the idea that, for lack of novelty to be found, all the technical features of the claimed invention in combination must have been communicated to the public, or laid open for inspection. The mere fact that a product was put on the market would therefore appear to result in that product being laid open for inspection (and therefore "available")".
• "[T206/83 and T 26/85] convey the idea that the enablement of a disclosure is a necessary condition for this disclosure to have been made available to the public within the meaning of Article 54(2) EPC. In other words, a disclosure which is not enabling would not be comprised in the state of the art defined in Article 54(2) EPC. This appears also to be the rationale underlying the reasoning of the Enlarged Board in point 1.4 of the Reasons for opinion G 1/92."
• The referral decision is detailed, also studying the Travaux and recent case law. The full text can be found below. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 4/19 - Referral - Double patenting - T 0318/14

Key points

• The Board refers question to the Enlarged Board about double patenting. The questions were already announced during the oral proceedings of 07.02.2019, see here. The Board has now issued the written decision to refer the questions.
• The questions are stated below. The more important thing is the extensive legal analysis of the Technical Board of Appeal, which stops shortly before concluding that there is no legal basis in the EPC for a prohibiting double patenting.
• "The main conclusions by the [Technical Board of Appeal]  can be summarised as follows:
• - There is no express provision in the EPC which prohibits double patenting.
• - It is not clear whether such a prohibition became an implicit part of the Convention by way of an agreed statement or similar instrument adopted at the Munich Diplomatic Conference.
  - The legislator did not introduce an express prohibition on double patenting at the Diplomatic Conference for the revision of the EPC in 2000. Article 139(3) EPC remained unchanged.
• - A prohibition on double patenting cannot be based on Article 60(1) EPC.
  - Neither Article 63(1) EPC nor Article 76(1) EPC offers scope for the idea of a prohibition on double patenting.
  - It is questionable whether Article 125 EPC is appropriate as a legal basis for a prohibition on double patenting. This provision cannot serve to introduce a new condition for patentability (or a ground for refusal). [...]
• - If a prohibition on double patenting with respect to European patent applications may be introduced at all, this could be by way of case law filling an unintended gap in the law. 
• However, in view of the policy considerations involved, it appears that a proper legislative procedure would offer a more favourable context for establishing a sound legal basis for a prohibition on double patenting."

The following questions are referred to the Enlarged Board of Appeal:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
a) on the same date as, or
b) as a European divisional application (Article 76(1) EPC) in respect of, or
c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?


EPO T 0318/14 - T0318/14 - link

File wrapper here

EPO T0318/14 Double patenting
EPO G4/19 Double patenting
EPO G 4/19 Double patenting
EPO G 0004/19 Double patenting
EPO G0004/19 Double patenting
Note the case number was confirmed on 16.01.2020 (link).

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division by which European patent application No 10718590.2, based on an international application published as WO 2010/130661, was refused under Article 97(2) EPC "in conjunction with Article 125 EPC".

II. The examining division found that claim 1 of the sole claim request on file was directed to subject-matter which was "100% identical" to the subject-matter claimed in European patent No 2 251 021, which was granted on European patent application No 09159932.4, the priority document of the present application. This was held to be contrary to the principle of the prohibition on double patenting referred to in decisions G 1/05 and G 1/06.