G 0001/92 - Availability to the public (through public prior use) - #46

Citation rank: 46
No. of citations: 100

G 1/92 is concerned with the question of what is actually being "made available" to the public when a product is made available to the public through public prior use.

In this case the President of the EPO referred the following question to the Enlarged Board of Appeals (Art. 112(1)(b)):

"(1) Is the chemical composition of a product made available to the public by virtue of the availability to the public of that product, irrespective of whether particular reasons can be identified to cause the skilled person to analyse the composition?" and, if the answer to this first question is positive,

"(2) Does the principle extend to the more general case whereby all information which can be obtained from a product is made available to the public by virtue of the availability of that product, irrespective of whether particular reasons exist to cause the skilled person to search for that information?"

The referral was based on "diverging case law" (Art. 112(1)(b)), namely on T 93/89 and T 406/86. T 93/89 held that making available to the public a product does not automatically make available its internal structure or composition. The Board in T 93/89 held that a particular reason (ausreichender Anlaß) must be identified why the skilled person would have analysed the product. T 406/86, on the other hand, found that no such particular reason to analyse the product is needed in order to make the structure or composition available to the public.

The Enlarged approached the questions by considering the wording of Art. 54(2), which reads:

"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use or in any other way, before the date of filing of the European patent application."

Regarding the question what is made available by public prior use, they stated:

"[where a technical teaching] results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. 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." (point 1.4 of the reasons)

The Board also remarked that the EPC provides no basis for requiring that a particular reason must exist to analyse a product. They found, however, that such a requirement could remove commercially available and reproducible products from the public domain. This would amount to an "unfounded deviation from the principles applied in respect of the other sources of the state of the art as defined in Article 54(2) EPC". It would also introduce an element of subjectivity leading to uncertainty in applying the concept of novelty.

The Enlarged Board concluded that the composition or structure of a product is state of the art when the product as such is available to the public and can be analysed and reproduced, irrespective of whether or not particular reasons exists for analysing the product.

The Board, however, pointed out that public prior use of a product only makes available to the public its composition and/or structure. Further properties of the product, which can only be determined through interaction of the product with other products or substances, or through other forms of experimentation, are not automatically made available to the public (point 3 of the reasons). Prominent examples are the first and further medical indications of a chemical compound.

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Headnote:

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.

The full text of the decision (in three languages) can be accessed here.