The European Patent Office’s (EPO) Enlarged Board of Appeal (EBoA) has issued its highly anticipated decision G 1/23, significantly impacting how “state of the art” (prior art) is assessed for products already on the market, especially regarding the so-called “enablement requirement”.

Key Findings of G 1/23:

The EBoA has clarified two crucial points:

• A product put on the market before the filing date of a European patent application cannot be excluded from the state of the art (within the meaning of Article 54(2) EPC) solely because its composition or internal structure could not be analyzed and reproduced by the skilled person before that date. This means the physical product itself, as available to the public, is considered prior art.
• Technical information about such a product which had been made available to the public before the filing date forms part of the state of the art, irrespective of whether the skilled person could analyze and reproduce the product and its composition or internal structure before that date.

Why this change?

The EBoA rejected previous interpretations of the “reproducibility requirement” derived from G 1/92, which implied that a product needed to be reproducible (meaning, able to be prepared from different starting materials, not just re-obtained from the market) to be prior art. The Board found that such a requirement leads to “absurd results,” as virtually no material in the physical world would ultimately qualify as prior art, given that all materials rely on some inherently non-reproducible starting materials (e.g., chemical elements, crude oil). The decision emphasizes that the “state of the art” refers to the abstract technical teaching or information content, which, once public, does not disappear, even if the physical product does.

Practical Implications for Assessing Prior Art:

This decision provides greater clarity and a more pragmatic approach:

• Novelty (Article 54(2) EPC):
  • Since non-reproducible products and their analysable features are now unequivocally part of the state of the art, a later patented product cannot be found novel if all its claimed features were disclosed by an earlier available product, even if that earlier product was not reproducible by the skilled person.
  • The concept of “accidental anticipation” remains relevant, meaning that even unrelated or remote prior art cannot be ignored for novelty if it discloses the invention.
• Inventive Step (Article 56 EPC):
  • While non-reproducible products are now part of the state of the art, their disclosed, yet non-reproducible, features may, though not necessarily, be considered in the assessment of inventive step.
  • A non-reproducible product may still be considered the closest prior art or a source of complementary technical teachings suitable for combination.
  • The inability to reproduce an important property of a product may be considered when determining if the skilled person would consider the product relevant prior art when trying to solve a technical problem. When assessing inventive step, the skilled person may have valid reasons for disregarding certain prior art, such as insufficient information.
  • What is “hidden” versus “made available”: The long-standing principles from G 2/88 and G 6/88 remain valid: What has been “made available to the public” is a question of fact in each case. A distinction must be drawn between information that is truly made available and information that remains hidden or has not been made available. Crucially, “what is hidden may still be obvious.”
• Technical Information:
  • Technical documentation (e.g., brochures, non-patent or patent literature) associated with a marketed product is unequivocally prior art, regardless of the product’s reproducibility. All analysable properties of the product, by virtue of its physical accessibility, become part of the public domain.
• Proof:
  • The EBoA clarifies that difficulties in reconstructing a product’s properties at a later time (e.g., if it’s no longer available) are problems of proof and evidence for the parties, not reasons to exclude it from the state of the art altogether.

This landmark decision aligns the legal framework with real-world technical practices, ensuring that publicly available products are duly considered in patentability assessments.