Preliminary Opinion G1/23 – Assessment of Disclosure in Complex Products

The Enlarged Board of Appeal (EBA) of the European Patent Office has recently issued a preliminary opinion on referral G1/23. This preliminary opinion, if confirmed, would constitute a significant change in the EPO’s established practice regarding the assessment of the state of the art when the assessment of the novelty and inventive step of a European patent application involves products that were publicly available before the filing date of that patent application, but were difficult to analyze and reproduce by a person skilled in the art, at a date prior to the filing date.
 

In particular, the referral seeks to clarify whether a product that is difficult to reproduce or analyse, or technical information published in relation to that product, can be deemed to be part of the state of the art in relation to the patent application, and therefore whether it can be legitimately used in the assessment of the novelty and inventive step of the patent application.
 

Until now, in the analysis of these particular cases of prior art, the guidelines indicated by the EBA decision G1/92 have been followed. Said decision established that: “[…] chemical composition of a product is state of the art when the product as such is available to the public and can be analyzed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analyzing the composition” and “same principle applies mutatis mutandis to any other product.” Furthermore, decision G1/92 established that “Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art”.
 

Therefore, in the light of these guidelines, to argue that a product belongs to the state of the art, it would be necessary to asses that: a member of the public has been able to access the product, an expert in the field is able to analyse the composition or internal structure, such expert in the field is able to reproduce the product on the basis of common knowledge in the field and without excessive burden.
 

The preliminary opinion of the EBA seems to go in the direction of eliminating the requirement of the possibility of analysing and reproducing the product without excessive burden. As a consequence, technical information, made available to the public before the filing date, and relating to a product whose internal structure or composition could not be analysed and reproduced without excessive burden by an expert in the field before the filing date of the patent application, are part of the state of the art regardless of whether the composition or internal structure of the product could be analysed and reproduced without excessive burden by an expert in the field before the filing date of the patent application.

This proposed amendment is supported by the EBA Committee by providing some examples that can be obtained from the rigorous application of the enablement and reproducibility criteria outlined in Decision G1/92. In particular, the EBA points out that under these guidelines it would be absurdly possible to patent a product even after it has been released onto the market, if it were considered complex to reverse engineer that product, even if technical information about it is known.

Although the referral in G1/23 focuses on commercially available polymeric products with compositions that are not easily reverse engineered, the resulting decision could have far-reaching consequences for many other technological sectors. Furthermore, if the preliminary opinion were to be confirmed, this would be a issue that companies producing complex products would have to consider, as it would become riskier to start marketing or selling a complex product, i.e. one that is difficult or impossible to reverse engineer, before filing a patent application to protect it.
We hope that the EBA, in addition to amending the content of Decision G1/92, will formulate more detailed guidelines and we will not fail to update you on developments.
Via: https://register.epo.org/application?documentId=LZU4SM6SOL8ATGI&number=EP11830390&lng=en&npl=false

PAGINE WEB DA CUI HO PRESO SPUNTO:
https://www.gje.com/resources/g1-23-does-the-enlarged-boards-preliminary-opinion-shine-a-light-on-the-state-of-the-art/
(questo sopra fa delle ipotesi dell’impatto sulle quali non sono d’accordo)
https://www.kilburnstrode.com/knowledge/european-ip/g123-epo

https://justpatentlaw.blogspot.com/2024/09/g-123-preliminary-opinion.html#