Referral To The EBoA On The Possibility To Exclude The Prior Use Of A Product Which Cannot Be Reproduced Without Undue Burden By The Skilled Person From The State Of The Art

• Jurisdiction: European Union
• Law Firm: Orsingher Ortu ' Avvocati Associati
• Subject Matter: Intellectual Property, Patent
• Author: Orsingher Ortu - Avvocati Associati
• Published date: 27 October 2023

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...