The Enlarged Board of Appeal (EBA) issued important guidance on what constitutes the “state of the art” in its decision G1/23 of 2 July 2025. The EBA found that:
1. A product put on the market before the date of filing of a European patent application cannot 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 by the skilled person before that date.
2. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
Article 54(2) EPC states that: “The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.”
G1/23 was a referral from T438/19 where there arose a question as to whether a specific commercially available polymer for manufacturing solar cells could be considered as belonging to the state of the art even though it could not be reproduced. The EBA had previously given guidance on the “reproducibility question” in G1/92 which stated that: “The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, …”. However, different Appeal Boards had interpreted G1/92 in different ways.
G1/23 gives welcome clarification on G1/92 that it is public availability and not technical reproducibility that is relevant to the state of the art. However, the decision will also raise other interesting questions regarding the application of the tests for novelty and inventive step.
In the context of consequential questions, one is reminded of decision T0627/91 regarding a prior use of a specific composition. In that decision it was held that a specific prior disclosure, was novelty destroying. However, when that specific composition was removed from the scope of the claim, the claim was rendered novel. The claim was also found inventive over the state of the art as the prior use had not provided a teaching to the art for the purposes of inventive step when viewed through the lens of the problem/solution approach.
As in many cases, the answer to one question often leads to the asking of other questions!
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