Résumé de EPC2000 Art 054 pour la décision T0438/19 du 27.06.2023

In T 438/19 the board identified boards' diverging approaches in applying G 1/92 with regard to the following aspects: (i) interpretation of "available to the public" leading to the exclusion from the state of the art within the meaning of Art. 54(2) EPC of a commercial product (including its chemical composition/internal structure) or only of its chemical composition/internal structure, (ii) the degree of detail required for the analysis of said product and (iii) the requirements for its reproducibility. With regard to point (i), boards had reached diverging conclusions when it was found that the product put on the market could not be analysed or reproduced, deciding either that (a) its chemical composition (or internal structure) was not state of the art, i.e. adopting the wording of the conclusion of G 1/92, or that (b) the product itself was not state of the art, thus including its chemical composition or internal structure based on G 1/92, point 1.4 of the Reasons. On point (ii), whereas some boards had taken as a criterion the exact composition of the product, in other decisions such a strict condition had not been required. The situation was similar with regard to the reproducibility condition (point (iii)). Whereas some boards had taken as a criterion the ability to exactly reproduce the product, in other decisions such a strict condition had not been required. In the light of the case law as at the date of G 1/92, the rationale underlying G 1/92 appeared to be that the enablement of a disclosure was a necessary condition for this disclosure to have been made available to the public within the meaning of Art. 54(2) EPC. However, in the light of the travaux préparatoires, "available to the public" in Art. 54(2) EPC appeared to be intended to express the possibility for the public to take note of the prior art, i.e. the accessibility to the public of the prior art, without any requirement as to its enablement. In addition, partial properties or structural information of a product put on the market were frequently reported in documentation published before the relevant filing date. There was no apparent reason why such partial information about products put on the market reported in said literature without any information as to the reproducibility of said product, which information might even be the result of a partial analysis of said product performed by the authors of the publication, should be treated differently from any information which could be gained from a partial analysis of the same commercial product. The board also explained that a decision on the ability of the skilled person to reproduce a product put on the market, which one could understand as the ability to reproduce it identically, would not only require an assessment of the level of detail or type of characterisation required for analysing a given product, but also a definition of the degree of variance which can be accepted in order to qualify the product reproduced to be identical to that put on the market. This would appear in the field of polymers to entail the use of subjective criteria, resulting in legal uncertainty when novelty and inventive step needed to be examined in the light of said product. It was however clear from G 1/92 that the Enlarged Board, for reasons of legal certainty, did not wish to provide a definition of the state of the art which would result in a subjective assessment of novelty. The board therefore referred the following questions to the Enlarged <BOA>"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?"