The Enlarged Board of Appeal (EBA) at the European Patent Office (EPO) has delivered a significant judgment, G 1/23, which fundamentally alters how prior art is evaluated within European patent law. This momentous decision expands the definition of prior art, with far-reaching implications for businesses and intellectual property strategies across all technical domains.
Reinterpreting Prior Art Standards
Previously, under EPO practice outlined in G 1/92, a product available to the public was considered prior art only if it could be analyzed and replicated by a skilled individual. This stance sometimes excluded complex or obscurely structured products, even if they were commercially available.
G 1/23 overrules this interpretation. The EBA now holds that any product made publicly accessible - through sale, distribution, or other means - is deemed prior art under Article 54(2) EPC. Furthermore, any technical information derivable from such a product, whether through measurable properties or observable characteristics, must be considered when assessing novelty and inventive step.
This shift eliminates the concept of "secret safe harbors," meaning that if a product is sold publicly, even with limited or undisclosed technical details, it can now challenge the novelty or inventive step of a later-filed patent. This reinterpretation aligns European law more closely with aspects of U.S. on-sale bar doctrine under 35 U.S.C. § 102, while retaining distinct differences, such as Europe's exclusive focus on publicly accessible products and the absence of grace periods provided by U.S. law.
Broader Implications Across Technical Fields
The impact of G 1/23 extends across a wide range of technical fields:
High-Tech and "Black Box" Scenarios
In sectors like pharmaceuticals or biotechnology, where compositions may be difficult to ascertain, G 1/23 ensures that marketed products can serve as prior art. For example, a patented algorithm embedded in a commercial device could face challenges if the device's behavior inherently discloses the algorithm's output.
Software and Electronics
In software development, a marketed device may anticipate or render an invention obvious based on its revealed functionality. Practitioners must now consider both source code and observable behaviors when assessing inventive step.
Leveraging Prior Uses in Oppositions/Litigation
Patent opponents and litigants should consider prior product sales or uses when challenging a patent. Even if a product's exact composition is unknown, any publicly available features can be used to argue invalidity. Evidence such as lab analyses, affidavits, or dated product literature will be critical in establishing prior art.
This decision also casts doubt on patents previously granted under the now-rejected interpretation of G 1/92. Patents that relied on a prior use being deemed non-enabling may now face heightened scrutiny.
Conclusion
G 1/23 represents a significant shift in European IP law, expanding the scope of prior art and introducing new challenges for patent filers and practitioners. It underscores the importance of transparency in product marketing and highlights potential vulnerabilities of previously granted patents to prior use challenges.
As technology advances and products become increasingly complex, staying informed about legal developments like G 1/23 will be essential for companies navigating the ever-evolving landscape of intellectual property rights.