The EPO Enlarged Board of Appeal has now issued its preliminary (and non-binding) opinion on G 1/23. This referral (from the Technical Board of Appeal in T 438/19) seeks to clarify whether a commercially available product, with an undisclosed composition or internal structure, must be analysable and reproducible by the skilled person in order to constitute prior art under Article 54(2) EPC.
G 1/23 vs. G 1/92
The preliminary opinion on G 1/23 appears to overturn G 1/92, which had previously concluded that for a product to become prior art, the skilled person must be able to determine the composition of the product and then reproduce it without undue burden. Amongst its reasoning in the preliminary opinion, the Enlarged Board on G 1/23 states that G 1/92 "would directly lead to the result that irreproducible products would effectively cease to exist for the purposes of the EPC. The Enlarged Board is of the opinion that such an extreme result could not have been intended by G 1/92".
Preliminary opinion on G 1/23
Instead, the preliminary opinion on G 1/23 concludes that a product which is put on the market (and is therefore publicly available) is prior art even if the skilled person is unable to analyse and reproduce its composition. Therefore, whereas currently an Applicant may be able to patent a product which had been on the market before filing by arguing that the product was non-reproducible (e.g. due to secret know-how), this will no longer be possible if the Decision that issues on G 1/23 matches the preliminary opinion.
The Enlarged Board has given the EPO President and the parties an opportunity to comment on the preliminary opinion by 16 October 2024, after which a final Decision will be issued. This Decision has the potential to impact the commercialisation and IP strategies of innovators in a wide variety of technical fields. We will keep you updated.
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