G 1/23: New Referral to the Enlarged Board of Appeal Aims to Clarify What Constitutes the “State of the Art”

New questions have been referred to the Enlarged Board of Appeal by the Technical Board in T 438/19.  The referral aims to clarify the purported legal uncertainties when it comes to assessing what constitutes the state of the art within the meaning of Article 54(2) EPC in relation to a commercially available product.

The questions are referred under G 1/23 (“solar cell”), and are as follows:

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?

We will be following the progress of this referral, so stay tuned for further updates.  To find out more, feel free to get in touch with Lucy Samuels, Tom Blackburn, or email us at gje@gje.com.