[Guest post] Has G1/23 harmoniously "recast" the European law of enablement?

In the first of two posts on G1/23, Kat Friend Greg Corcoran provides an in-depth look at the recent Enlarged Board of Appeal on prior use in G1/23 and considers its practical implications: 

Introduction

In G1/23 the Enlarged Board of Appeal (‘EBA’) is said to have introduced an ‘on-sale-bar’ into European patent law. The placement of an irreproducible product on the market in effect adds all features of the product to the state of the art that are analysable by a person skilled in the art or can be proven, for example, by documentation, see for example the IPKat “Non-reproducible commercial products are prior art (G1/23)”. The EBA rejected the notion that a product's non-reproducibility stops it from forming part of the state of the art and is alleged to have rejected the law of enablement set out by G1/92 replacing it with G1/23. Is this really a fair characterisation of the decision? Does G1/23 have such far-reaching consequences as to replace G1/92 or are the implications of G1/23 more nuanced?

G1/23: the Context of the Decision – G1/92

Patentability is assessed relative to the state of the art, which at the time of a relevant date is everything made available to the public by means of a written description, by oral description, by use, or in any other way (Art 54(2) EPC). The referral relates to the question of the contribution to the state of the art by a product placed on the market. Until the referral, the leading case law was G1/92, which decided that (Orders 1 & 2 which are read in context of reason 1.4 (3rd sentence)):

(1) 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 [without undue burden], irrespective of whether or not particular reasons can be identified for analysing the composition.

(2) The same principle applies mutatis mutandis to any other product.

The referring board, T0438/19, found divergent case law regarding the requirements for reproducibility ranging from exact reproduction of the product (e.g. T1833/14) to not requiring such a requirement (e.g. T952/92).

G1/23: the Decision

The referral featured three questions which directly relate to the technical details of product prior art referred to in the case underlying the referral, which were the same as in G1/92: its physical structure and composition. The referral sought to resolve the identified diverging case law (reason 15 to 18 T438/19): did all features of the product placed on the market have to be reproducible by a person skilled in the art for the product to be treated as prior art (‘full reproducibility’), or only information insofar as it was analysable by a person skilled in the art.

Question 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?

No, the EBA decided that such a product cannot be excluded from the state of the art for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.

Question 2: 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 [...] 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?

Yes, such technical information is part of the state of the art irrespective of the ability of the skilled person to undertake such analysis and reproduce the product and its composition or internal structure before that date.

The EBA decided not to answer question 3 because it required a positive answer to question 1 or a negative answer to question 2.

Starting from the Beginning: G1/92

The order of G1/92, as quoted above, differs from G1/23 because it does not contain all the wording of the ratio of G1/92. The order does not refer to an undue burden in the analysability and reproducibility of the product. Instead, this essential part of the ratio appears in reason 1.4 G1/92.

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, reason 10 of G1/23.

The second paragraph of the order expressly applies the same principles as found for a chemical composition to any other product, see order 2, G1/92. There is no such express generalisation in G1/23.

That G1/23 does not expressly state that it applies to all technical fields could be a flag that the entire decision should be read carefully before applying the order to all technical fields. As demonstrated by G1/92, how a decision should be applied does not have to be encapsulated in its order as expressly written.

In Clarifying G1/92, G1/23 Expressly Recasts G1/92

G1/23 is often presented as clarifying G1/92 (see IPKat). Yet at reason 73, G1/23, expressly recasts the ratio of G1/92 by interpreting reproducibility to include obtaining the product from the market in its readily available form. (This is emphasised by the EBA’s choice of title for this case ‘G1/23 Interpretation of G 1/92 …’.) The EBA concludes that the requirement of reproducibility is redundant, and it consequently found that the contradictions of the enablement requirement disappear. Yet in omitting the reproducibility requirement from G1/92, its ratio cannot be maintained in its entirety. The EBA supported the partial maintenance of G1/92. To emphasise its point, the EBA stated this quote using bold text:

"The proper reading of the answer of G 1/92 is as follows: The chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed … by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition". (5th and final sentence reason 73, G1/23)

Following this approach of reading the explicit bold text included at reason 73 of G1/23 into the ratio of the decision, the decision G1/92 is not set aside, but is reinterpreted by an express amendment of the text of its original ratio. Thus, it could be said that G1/92 is  'recast' by G1/23: all properties and any other technical teaching of a product put on the market that the person skilled in the art may derive from analysis of the product will belong to the state of the art.

Undue Burden

Inscrutable 

The original ratio of G1/92 considered whether the analysis and reproduction of the product was unduly burdensome. Although G1/23 establishes that the reproducibility requirement of G1/92 is no longer required, the decision does not consider the threshold of what becomes an undue burden of analysis of the recast formulation. Why is this?

The EBA did ask whether it should answer this question of the legal limits to the analysis of the product put on the market, reason 76, and whether ‘undue analysis’ was analysis of the product ‘without unreasonable effort… using standard analysis methods…’ available to the skilled person, or whether more excessive techniques of analysis may still be technically possible, reason 77. However, the EBA decided that it need not consider this question because the referral questions only featured the phrase ‘analysed and reproduced without undue burden by the skilled person’. The requirement of ‘analysability and reproducibility’ was a joint condition, reason 78. Since the EBA decided that reproducibility is not a requirement, the referral questions addressed by the EBA were effectively amended; the referral questions were essentially no longer those for which the referral was initiated.

Reason 3.3 of the Referring Decision, T438/19, noted that finding out the relevant properties of the prior art product ‘may have been obtained only with an analysis that needed efforts beyond an undue burden’. Yet, the EBA views that answering this question of what constitutes an undue burden of analysis for the person skilled would not be responsive to the referral questions. An answer from the EBA would not be decisive in assisting the Referring Board to address the case presented to it (EPO Guidelines 2025 V.B.2.3.3).

Although the requirement of the "undue burden" is omitted from the answers given by the EBA, the absence of guidance in G1/23 ‘does not mean that the issue of the "analysis without undue burden" can never arise’, reason 78. It simply means that the conditions for testing this recast general test of G1/92 were not considered by the EBA because it was not relevant for it to answer the referral questions to address the underlying case. There is no reason to prevent a future board from deciding that analysability may present an undue burden to a person skilled in the art limiting the disclosure of a product on the market to the state of the art. Any statement that G1/23 no longer requires the consideration of undue burden may be a misinterpretation and misapplication of G1/23 and of the law.

Summary of Analysis in view of G1/92

The consequences of G1/23 can be considered as nuanced. The decision appears to have been made with a view to answering the referral questions so far as necessary to assist the Referring Board in addressing the underlying case from which the referral derived. Since the EBA decided that reproducibility can be satisfied by market availability, the EBA recast G1/92. Yet the referral questions were based on the original wording of G1/92 and the EBA decided that rewriting the referral questions in line with G1/92 recast was not necessary because answers to such questions would not have assisted the Referring Board. Consequently, the EBA has not answered the referral questions in the context of G1/92 recast. The threshold of ‘analysability without undue burden for a person skilled in the art’ has not yet been tested, but the EBA has expressly warned that the test could still apply.

Practical Consequences of Disclosure by Analysis

Until a future board of appeal rules when ‘analysis becomes unduly burdensome’, a proprietor of a product might decide to proceed with caution, knowing that all features of their products placed on the market may be considered analysable to become state of the art (despite the EBA cautioning that this may not be the case). If the proprietor wishes to later file a patent application (and be an applicant), or to keep information about the product as a trade secret, they are often best served by caution to preserve and protect their interests. For example, they could disclose and supply the product without placement on the market, by supplying the product under NDA. Proprietors can also limit the extent of disclosure of technical details about the product in the marketing materials. As an applicant, the proprietor should carefully consider whether to file a patent application for a new product feature that is commercially important, even if they think its discovery would be difficult through analysis of the product.

Conclusion

G1/23 appears to have reinterpreted rather than rejected G1/92 so that reproducibility is fulfilled by market availability of the product for the product to become part of the state of the art. The reinterpretation by the EBA did not consider what an ‘undue burden’ of analysis for a person skilled in the art would be, which remains unanswered. However, until a board decides this question, a proprietor of the product would be advised to exercise caution and assume that any placement of a product on the market would be disclosure of any analysable aspect of the product no matter how burdensome that may be for a person skilled in the art.

How could this decision be applied in other technical fields and in the downstream courts? These questions will be considered in a following article to be published soon.