Prior Use: To Be or Not to Be? That is the million-dollar question for the Board.

One of the key criteria for obtaining patent protection for an invention is that the invention must be new. The European Patent Convention in paragraphs (1) and (2) of Article 54 sets out the novelty requirements:

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

The interpretation of “made available to the public”, in particular in the context of (commercially available) products and their constituents, was subject of an Enlarged Board of Appeal (EBA) opinion G 1/92. In G 1/92, the EBA held that:

“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.”

While EBA decided that public availability of a product requires that the product can be analysed as well as reproduced, subsequent jurisprudence has revealed differing approaches taken by various Technical Boards of Appeal (TBA) in the interpretation of the criteria set forth in G 1/92. In particular, various approaches have been taken on the extent of the requirements of analysability and reproducibility of products to qualify as bona fide prior art.

Recognising this divergence, the TBA in T 438/19 in order to ensure uniform application of the law, referred the following questions to the Enlarged Board of Appeal for decision:

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 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 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 questions posed would pique the interest of any would-be applicant, essentially, can a prior use of a product avoid a novelty destructive effect on a subsequently filed European patent application. The possibility to seek protection for products already on the market - the correct criterion being applied - would seemly appear to offer applicants a golden opportunity. 

If you have any questions, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email on info@dcp-ip.com.