G 1/23: Under what conditions does a commercial product form part of the state of the art?
G 1/23*: Under what conditions does a commercial product form part of the state of the art?
The Enlarged Board of Appeal (EBA) of the EPO has clarified the extent to which a product put on the market, that cannot be analysed nor reproduced, becomes prior art and prevents subsequent patent protection.
The questions referred to the EBA in this file are closely linked to the earlier opinion G 1/92, issued in 1992, which stated that the composition or internal structure of a product belongs to the state of the art provided that the product can be both analysed and reproduced by the skilled person, regardless of the motivation to carry out such investigations (see Order and Point 2 of G 1/92).
The case-law arising from applying opinion G 1/92 was divided on the mandatory nature of the condition of reproducibility of a commercial product, which motivated the referral of the Board of appeal in its decision T 438/19. In this file, the physico-chemical properties (density, hardness, MFR) of the polymer known as ENGAGE® 8400 has been disclosed in a technical datasheet supplied by the manufacturer. The patent proprietor has argued that these properties do not belong to the state of the art, as a person skilled in the art cannot synthesize the polymer in an identical way on the basis of its general knowledge only. The opponent, in contrast, has submitted that the properties of the material are part of the state of the art, even if the product cannot be reproduced, since the information was made available to the public before the filing date.
To address the issue, the EBA has first interpreted the term “product put on the market” as including not only manufactured products that a skilled person can procure from the market, but also naturally occurring raw materials that are used by the skilled person in the manufacture of products (Sections 26–30). Considering raw materials coming from a natural source as commercial products determines the entire line of reasoning.
The EBA has then examined the ways in which a product put on the market can be “reproduced”. The manufacture of a physically and technically equivalent copy as discussed in G 1/92 has been mentioned. Obtaining the product that is readily available for purchase has also been considered by the Enlarged Board as a reproduction of the product. Finally, the use of the product as a means of manufacturing a new object or as a reagent for the synthesis of a chemical compound was discussed (Sections 31–39).
Having interpreted the scope of the referred questions, the EBA has looked for any valid argument in support of the reproducibility requirement as a condition for public disclosure.
First, the EBA considered it absurd to regard a product as non-existent simply because it cannot be reproduced, since a commercial product is physically available to the public. All human-made products necessarily derive from natural raw materials: the ENGAGE® 8400 polymer, which is derived from crude oil, is a very good example. Consequently, “the reproducibility excluding the mere obtaining of the product from the market or taking it from nature, leads to the result that no material in the physical world would belong to the state of the art” (Sections 44–68).
Second, the EBA also found it absurd that the properties of a non-reproducible product may not fall under the state of the art, although the product has a physical and a legal existence. In the present file, the skilled person may substitute ENGAGE® 8400 with a standard material exhibiting the same properties and manufacture an object via injection moulding, while preserving mechanical structure of the object (Section 69).
To resolve these two paradoxes, the EBA has interpreted the concept of “reproducibility” set out in G 1/92 in a broader sense, holding that the material availability of a product is sufficient for the product to be considered as reproducible. It has further ruled that “all analysable properties of the product put on the market will belong to the state of the art”, irrespective of whether the product can be reproduced or not (Sections 73–75).
In conclusion, a product put on the market is part of the prior art, even if its internal composition (or structure) cannot be reproduced by the skilled person. Consequently, any technical information relating to that product that has been available to the public is part of the prior art too (Section 91 and Order).
Manufacturers and their distributors should be particularly cautious and vigilant about the content of the technical information they communicate about their products.
It is strongly recommended that patent protection be secured prior to any first commercialisation.
Putting on the market a product as well as communicating technical information to the public constitute disclosures, whether or not the product can be reproduced by the applying some general knowledge. Although very general in scope, the opinion G 1/23 should have a particular impact on the field of polymer and materials chemistry.
*Opinion of the Enlarged Board of Appeal of 02 July, G 0001/23
ECLI:EP:BA:2025:G000123.20250702