On 27 June 2023, the Technical Board of Appeal ("TBoA") of the EPO referredto the Enlarged Board of Appeal ("EBoA") three questions of law in relation to the possibility to consider as prior art a non-enabling disclosure ("Referral"). The case concerns a patent related to polymers for coating and protecting solar cells in solar panels. In particular, claim 1 claims a material for encapsulating a solar cell, which comprises several materials in specific amounts and densities. The obviousness of the patent depends on the possibility to consider the product "ENGAGE 8400", which was commercially available before the filing of the patent, as a prior art, even if a reverse engineering of that product would have required an extensive research programme, with no guarantees of success. In light of the considerable practical relevance of the issue which potentially arises every time the assessment of prior art involves the possibility to analyse and reproduce the chemical composition of a commercially available product, with the Referral, the EboA shall assess (i) whether a product placed on the market before the filing of the patent application should be excluded from the state of the art within the meaning of Art. 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, (ii) whether technical information about said product made available to the public before the filing date is state of the art within the meaning of Article 54(2) EPC and (iii) 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 and if the composition and internal structure of the product shall be fully analysable and identically reproducible.
Originally published by August - September, 2023
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