EP 2 626 911 B1 relates to an encapsulating material for solar cell and a solar cell module.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that the granted patent fulfiled the requirements of sufficiency of disclosure.
The crucial question was whether the claims as granted lacked inventive step in view of the disclosure of document D1, particularly its Example 3 with the commercially available product ENGAGE® 8400.
The reproducibility of D1 was questioned by the proprietor with reference to opinion G 1/92.
The order of G 1/92
1. The chemical composition of a product is state of the art when the product as such is 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.
2. The same principle applies mutatis mutandis to any other product.
The referring decision
In T 438/19, the board referred the following questions to the EBA:
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?
2. If the answer to question 1 is no, 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 Art 54(2), 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 or the answer to question 2 is no, 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?
The EBA’s argumentation
What can be derived from G 1/92
For the EBA, the answer in G 1/92 gave rise to two separate legal issues. It confirmed that properties of products will belong to the state of the art, also without any specific motivation to analyse a property. Additionally, it was interpreted in the case law as setting up the requirement that a product put on the market needs to be reproducible in order to be an item of the prior art. The present referral is directed at this second issue only.
The EBA’s answer in G 1/92 unambiguously calls for the analysis and reproduction of the product as a condition to be examined.
There is no pointer in either G 1/92 or the referring decision that the analysis and reproduction of the product would be hindered by anything other than the lack of knowledge required to analyse and reproduce the composition.
The product in question was a commercially available man-made product. It is not discussed in the appeal file whether the ENGAGE® 8400 polymer had still been commercially available at a later time, e.g. at the time of filing or even later.
For the referring decision these issues do not appear to play any role for the prior art status of ENGAGE® 8400.
The EBA further considered it to be undisputed that the ability to physically reproduce a physically existing product is meant where G 1/92 mentions the reproduction.
For the EBA, the term “reproduce” appears to cover two possibilities.
If a product has been available for a reasonable period of time and in reasonable quantities, it will normally open up for the skilled person the possibility to obtain the product again in its readily available form.
Alternatively, the skilled person would consider manufacturing the product themselves. In this case the skilled person would look for a suitable method of manufacture.
Both G 1/92 and the referring decision proceeds on the condition that the product has been put on the market, and that as such is physically available.
Different interpretations of G 1/92?
The referring decision considers that at least two different interpretations of G 1/92 are possible. Where the composition (and therefore the product) cannot be reproduced,
(1) the product itself (inevitably including its composition) is not part of the state of the art in its entirety for the purposes of Article 54(2) EPC, or
(2) only the composition of the product does not belong to the state of the art, but the product itself and its reproducible properties are part of the state of the art.
The polymer ENGAGE® 8400 was intentionally put on the market as a multi-purpose polymer, useful in various applications. The manufacturer made efforts to advertise it and to make it known for all potential customers.
It is another matter that the manufacturer at the same time may have made every effort to hide the production secrets from its competitors.
For the EBA, neither the first nor the second suggested interpretation of the referring board of G 1/92 can be brought into conformity with the Convention, given that they both lead to a manifestly absurd result.
The contradictions of an enablement requirement set up by G 1/92 disappear if the condition of reproducibility in the answer of G 1/92 can be interpreted as including the obtaining of the product from the market in its readily available form.
Even if, as argued by the proprietor, the product itself being non-reproducible but otherwise existing and commercially available does not belong to the state of the art leads to an absurd result.
The assumption that the skilled person would ignore non-reproducible products cannot hold. Rather, the opposite is true: the skilled person cannot achieve anything without non-reproducible, but otherwise available products.
Readily available products can thus not be excluded from the common general knowledge of the skilled person, hence also not from the state of the art within the meaning of Art 54(2).
Potential disappearance of the non-reproducible product
The patent proprietor argued at length that man-made non-reproducible products cannot be considered to be “available to the public” because they may disappear from the market or may change.
The EBA does not see why this undisputed fact would keep the product from becoming part of the state of the art. Taking into account the uncertain future availability of a product put on the market, e.g. a man-made product, would mean that a fundamentally new element would appear in the notion of the “state of the art” within the meaning of Art 54(2).
The prior art status of a disclosure will have to be decided not only on the basis of facts that all occurred before the filing date, but would have to include an element of prediction. Put differently, the term “made available to the public” would have to imply not only the access to the information possibly only once in the past, but an apparently long-term, if not permanent and everlasting availability of the source of the information, here the man-made or naturally occurring product.
The disappearance of the non-reproducible product may cause problems, but such problems are nothing new or unusual.
The “state of the art” is the information content, the abstract technical teaching, which does not disappear from the public domain as a question of legal principle once the technical teaching becomes part of the state of the art, i.e. enters the public domain.
It is undisputed that the content of the technical teaching may be difficult to establish at a later time, as a question of proof. In most cases of public prior use, the latter has to be established by way of complicated evaluation of evidence.
This corresponds to the situation where a disclosure of some technical information was factually available to the public for a relatively short time only, but did not prevent the disclosure from becoming permanently part of the state of the art as a legal consequence of its temporary availability.
The order of the EBA
I. A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Art 54(2) for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.
II. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Art 54(2), irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
Comments
The EBA has confirmed G 1/92 and added that the mere fact of bringing a product to the market qualifies the product as prior art under Art 54(2), irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
If a marketed product is quoted in a piece of prior art under Art 54(2), then its composition or internal structure is considered as well belonging to the prior art.
The proposal of the EBA is in contradiction with existing case law
In view of the existing case law, the problems caused by a product only defined by a trademark, whether temporarily available or not, does not seem as easily solved as the EBA makes out.
There is also a long line of case law according to which a non-enabling disclosure cannot be held against an application or a patent. See Case Law of the Boards, 10th Edition, I-C, 4.11. Has this line of case law become obsolete with G 1/23?
In T 392/01, relating to self-adhesive wall-coverings, sufficiency was denied and the patent revoked. Thee only adhesive cited in the description, “Cascotak ADP 21/494″, cf. column 7, lines 29 to 36. The formulation of this adhesive was not disclosed in the patent.
This adhesive was, however, merely “a development product that evolved into WB 868“, and was thus not any longer available. “Cascotak ADP 21/494″ was manifestly available at the filing date of the patent, but not later. The patent underlying T 392/01 was revoked for lack of sufficiency.
Claim 1 of AR4 in T 842/14, requires the “anti-foam reagent” to be selected from a group of anti-foam reagents designated by trademarks, namely “1520-US, AF, FG-10, 0-30, SE-15, and Antifoam B”.
The board held that in order to reproduce the claimed method, each one of the anti-foam reagents is essential and must be available during the whole lifetime of the patent. Whilst it is common ground between the parties that all of them were commercially available at the priority and filing dates of the patent, their availability up to the end of the patent term was disputed.
The chemical composition of the anti-foam reagents designated by trademarks was thus not directly and unambiguously derivable from any published documents, as the exact composition of these anti-foam emulsions or reagents was explicitly said to be “proprietary”.
Since the conditions set out in decision G 1/92 were not fulfilled, claim 1 of AR4 did not fulfil the requirements of Art 83.
A similar conclusion was reached in T 797/14.
In T 522/14, the copolymer mentioned in the example is a commercially available material called “Durotak 387-2510”, but the description contained the disclosure of its composition, so that there was no problem of sufficiency.
In T 2020/13, in a piece of prior art, the catalysts used were disclosed by their trademarks, but their composition was known from documents of the manufacturer itself and had been added to the Chemical Abstracts database. They were thus known.
G 1/23 is not exempt from critics
Even if the question of sufficiency was not part of the referral, in view of the existing case law, the later availability of ENGAGE® 8400, should not have been ignored.
Following the EBA in G 1/23, the patents in T 392/01, T 842/14 and T 797/14 should not have been revoked.
As far as prior art or applications/patents are concerned, sufficiency of disclosure or prior art under Art 54(2) should not be treated differently.
The comparison with a public prior use for the availability of a product is an interesting point of view, but does not follow, in view of the existing case law, that a product ought merely to be available at the filing date, but also during the whole life of the patent.
A pragmatic solution only in appearance
Inasmuch G 1/22 and G 2/22 can be held as a pragmatic solution of the problems linked to the validity of priority, G 1/23, by ignoring the case law about enablement of prior art, cannot be considered as giving a pragmatic solution to the problem raised in D1.
Comments
2 replies on “G 1 /23 on the interpretation of G 1/92 has been issued – It is however not without problems”
I have so far only read it once but you have articulated what I think is worrying me.
I have so far only read it once but you have articulated what I think is worrying me.