Enlarged Board of Appeal of the EPO: 2023´s recap

26 January 2024

Last year, the EPO's Enlarged Board of Appeal (EBoA) issued critical decisions on patent challenges, addressing plausibility and entitlement to priority. Moreover, a referral to the EBoA was made.

26 January 2024

Two much-awaited decisions have been issued by the Enlarged Board of Appeal (EBoA) of the EPO, in 2023. In particular, the decisions on the case G2/21 “Reliance on a purported technical effect for inventive step (plausibility)” and the consolidated cases G1/22 and G2/22 “Entitlement to priority” were issued. Moreover, a new referral, case G 1/23 “Solar cell”, was made to the EBoA.

The decision on plausibility was issued on March 23, 2023. The referral included three questions relating to the use of post-published evidence (evidence/data generated after the priority/filing date of an application) to support a technical effect and what plausibility standard is required if post-published evidence is relied upon.

The EBoA concluded that evidence cannot be disregarded solely because it is post-published, which is consistent with the principle of free evaluation of evidence. Furthermore, the EBoA decided that, when assessing if a technical effect may be relied upon in support of inventive step, if the skilled person with the common general knowledge in mind and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention, then the post-published data can be taken into account.

The decision on Entitlement to priority was issued on October 10, 2023. The referral included two questions relating to whether the EPO is competent to assess entitlement to priority, and, if so, basically whether the “PCT joint applicants’ approach” applies to a PCT application where different applicants are listed for different designated states.

The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).

The EBoA did not expressly address the validity of the “PCT joint applicants approach”, but held that, in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B, allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.

Thus, the EBoA have decided that the mutual filing by parties A and B demonstrates, absent indications to the contrary, the existence of an “implicit agreement” between said parties. This implicit agreement confers party B the right to rely on the priority claim.

This decision seems to ease the burden on applicants, as the burden of proof of challenges to priority entitlement is shifted to the third party. This, very probably, will result in fewer entitlement attacks during opposition proceedings, particularly the speculative challenges to priority entitlement might be reduced.

Finally, on June 27, 2023, the referral G 1/23 was made to the EBoA. G 1/23 concerns the interpretation of “made available to the public” within the context of Article 54(2) EPC and the standard set by G 1/92 for determining if a prior use of a product may be considered “state of the art”.

This referral originates the appeal proceedings of European patent EP 2626911 (case T 0438/19), which relates to a material suitable as an encapsulating material for a solar cell comprising an ethylene/α-olefin copolymer.

The issue in T 0438/19 concerns whether the composition of a commercial product, the polymer ENGAGE® 8400, was “made available to the public” before the effective date of the patent. ENGAGE® 8400 was disclosed in D1 and considered the closest prior art by the opponent (appellant). The patentee (respondent) accepted that ENGAGE® 8400 was commercially available before the effective date of the patent but argued, relying on opinion G 1/92 and decision T 23/11, that it had not been “made available to the public” within the meaning of Article 54(2) EPC, because the skilled person was not able to produce exactly ENGAGE® 8400 without undue burden. Consequently, the patentee argued that the product ENGAGE® 8400 could not be considered enabled and, thus, could also not constitute prior art.

Therefore, the determination of the closest prior art depended on the application of opinion G 1/92, which concluded that:

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, 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.

However, diverging approaches by the Boards of Appeal exits with regard to the application of opinion G 1/92.

The Boards have 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 (for example, T 946/04 and T 1666/16), or that (b) the product itself, including its chemical composition or internal structure, was not state of the art (for example, T 370/02, T 2045/09, T 1833/14 and T 23/11).

The Boards have also taken diverging views regarding the degree of analysis required for a commercial product to determine its composition or internal structure in the sense of opinion G 1/92. Whereas some Boards took as a criterion the exact composition of the product (for example, T 946/04 and T 2068/15), in other decisions such a strict condition was not required (for example, T 952/92 and T 2458/09).

The situation is similar regarding the reproducibility condition. Whereas some Boards have taken as a criterion the ability to exactly reproduce the product (for example, T 977/93 and T 1833/14), in other decisions such a strict condition has not been required (for example, T 952/92 and T 1540/21).

Based on the above, it is clear that opinion G 1/92 has given rise to diverging interpretations by the Boards of Appeal over the past 30 years, leading to legal uncertainties when it comes to assessing what constitutes state of the art within the meaning of Article 54(2) EPC in relation to a commercially available product. Thus, in the referral G 1/23, the following questions were referred to the EBoA for decision:

  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?

The date on which an answer from the EBoA can be expected is not yet known but we will continue to monitor the situation and provide insights.

In the meantime, the EPO has issued a notice that the President has decided to stay all examination and opposition proceedings where the decision depends entirely on the outcome of this referral.

5/5 - (2 votes)

Isabel Álvarez

Degree in Biochemistry.Patents Department.European patent agent.

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