Communication from the Enlarged Board of Appeal concerning case G 1/23
This text is intended for publication in the Official Journal (OJ) of the EPO. It is made available in advance on the EPO website merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic. It cannot be guaranteed that this advance version accurately replicates that text.
In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.03 has referred the following points of law to the Enlarged Board of Appeal by interlocutory decision of 27 June 2023 in case T 438/19:
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 text of the referral in English is available on the EPO website under new.epo.org/en/boards-of-appeal/decisions/t190438ex1.html.
The Enlarged Board of Appeal considering the referral G 1/23 will be composed as follows: C. Josefsson (Chairman), I. Beckedorf, T. Bokor, M. Teppey, Y. Rüedi, P. Gryczka, G. Pricolo.
Third parties are hereby given the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2015, A35) in one of the official languages of the EPO (English, French or German).
To ensure that any such statements can be given due consideration, they should be filed by 30 November 2023 with the Registry of the Enlarged Board of Appeal, quoting case number G 1/23, and should be marked for the attention of Mr Nicolas Michaleczek (EBAamicuscuriae@epo.org).