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The Enlarged Board of Appeal issued its decision in G1/23 on 2 July 2025. The referred questions concerned whether a product put on the market before the filing of a European patent application could be excluded from the state of the art under Article 54 EPC, solely because the skilled person could not analyse its composition or internal structure, or reproduce it without undue burden. The Enlarged Board held that such a product cannot be excluded for this reason. An answer to the contrary would have significantly impacted the definition of the state of the art, a cornerstone of patent examination.
The questions referred to the Enlarged Board of Appeal in G1/23 stem from a legal uncertainty surrounding G1/92, regarding a requirement for a product to be reproducible to form part of the state of the art. Whereas the reproducibility requirement was not the focus of G1/92, it appears to have been an unintended consequence of its wording. In particular, G1/92 originally addressed whether the skilled person needs a particular reason to analyse the chemical composition of a product put on the market, in order for the composition to become part of the state of the art. The Enlarged Board of Appeal concluded that no such reason is required. Over time, case law introduced a range of interpretations regarding a supposed reproducibility requirement.
Some interpretations equated “reproducibility” with the skilled person’s ability to manufacture the product. G1/23 rejects this view, finding that such a requirement would exclude virtually all products from the state of the art, since all are ultimately based on materials that cannot themselves be reproduced. The Board emphasized that the skilled person, in practice, often relies on products available on the market or in nature when seeking a specific technical solution, e.g. a material with certain properties, when their own knowledge or resources are not sufficient to prepare such a material.
This decision confirms that a product that has been put on the market, cannot later be patented merely because its composition is not fully known or reproducible. Enablement is therefore not an implicit requirement for a product to be “made available to the public” within the meaning of Article 54(2) EPC. In other words, we don’t wake up in a world where your favourite soda is not known and could not constitute prior art simply because its recipe is secret.
In summary, the Enlarged Board concluded:
“Reproducibility in the sense of the referred questions cannot be a precondition for the product to become part of the state of the art within the meaning of Article 54(2) EPC. Question 1 is to be answered in the negative: A product put on the market cannot be excluded from the state of the art for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person. In this context, the term “reproduce” does not encompass the obtaining of the product in that form as put on the market, but only means reproduction in the more limited sense […]”.
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