When Are Products “Available to the Public” in the Sense of Art. 54(2) EPC?

Case Law | 29.06.2023

There is a new and very interesting referral to the Enlarged Board of Appeal (EBA) of the EPO (T438/19). The referral questions relate to the scenario that the prior art of interest is a product on which additional information is available, e.g. in a brochure or the like, that on the face of it could invalidate a later patent, but the underlying product has not been disclosed in an enabling manner. For example, this can be the case if the product could not be analyzed and reproduced without undue burden.

HOFFMANN EITLE's Düsseldorf partner Timo Pruß represents the patent proprietor in these proceedings and has also published on the background of this case in a recent HE Quarterly Issue. The EBA’s decision may provide valuable guidance which information on a product or the manufacture thereof needs to be known at the priority date of a patent to make it part of the state of the art.

The questions which have been referred to the EBA are the following:

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?
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?
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?

Further context on the case can be read on the KluwerPatent Blog (Co-authored with Thorsten Bausch).