Press Communiqué of 2 July 2025 concerning decision G 1/23 (“Solar cell”) of the Enlarged Board of Appeal
The Enlarged Board today issued its decision in case G 1/23. It concluded that a product put on the market cannot 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 reproduced by the skilled person.
Background
The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.
The referral decision G 1/23 concerns Article 54(2) EPC which sets out that 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 by any other way, before the date of filing of the European patent application.
In its interlocutory decision of 27 June 2023 in case T 438/19, Technical Board 3.3.03 referred questions to the Enlarged Board of Appeal on the conditions for a product to form part of the state of the art within the meaning of Article 54(2) EPC. In the case underlying the referral, it was in dispute between the parties whether a specific commercially available polymer product for the manufacture of solar cells could be considered to belong to the state of the art even though it could not be reproduced. The contested issue essentially concerned the interpretation of the Enlarged Board’s opinion in G 1/92 where the “reproducibility requirement” in question was set out as follows: “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, …”. The referring Board considered that this requirement gave rise to different interpretations in the case law. According to one line of case law, a product that was available on the market, but could not be analysed and reproduced by the skilled person at the relevant date, does not form part of the state of the art for the purposes of Articles 54 and 56 EPC.
Key considerations
The Enlarged Board analysed the different interpretations of the “reproducibility requirement” set out in opinion G 1/92. It found that - beside manufacturing the product from starting materials that were different from the product itself - also the repeated obtaining of the product from the market constituted a possible way of reproduction for the skilled person. Accordingly, the “reproducibility requirement” must be understood in a broader sense, namely as the ability of the skilled person to obtain and possess the physical product. This requirement was inherently fulfilled by a product put on the market. Publicly available technical information on such a product also belonged to the state of the art, irrespective of whether the skilled person could reproduce the product and its composition or internal structure.
The Enlarged Board held that it was not necessary to consider the “requirement of analysability” of a commercially available product separately from the “requirement of reproducibility” in order to answer the referred questions which concerned the joint condition “analysed AND reproduced”.
As to the possible subsequent unavailability or modification of the product, the Enlarged Board stated that this might make it more difficult to establish and prove some property of the product (including its exact or partial composition). However, this problem of proof had no influence on the legal character of the product as belonging to the state of the art because the abstract teaching that had been derivable from it could not disappear retrospectively.
Order
The order by the Enlarged Board of Appeal reads as follows:
1. 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 Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.
2. 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 Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
3. In view of the answers to Questions 1 and 2 an answer is not required.
Contact
Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
[email protected]
This press release is a non-binding document for media use.
Further information