EBA Rules in G1/23: Marketed Products Are Prior Art even if they cannot be “reproduced”
July 03, 2025
On 2 July 2025, the Enlarged Board of Appeal (EBA) issued its decision in case G 1/23, clarifying the definition of “state of the art” under Article 54(2) EPC. The EBA held that a product placed on the market before a patent’s filing date cannot be excluded from the prior art for the sole reason that its internal structure or composition cannot be fully analysed or reproduced by the skilled person.
In its decision, the EBA indicated that the meaning of “reproduced”, as used by the referring Technical Board, was too narrow as it was restricted to allowing a skilled person to make the product itself. The EBA considered that obtaining a product which was on the market must be included in the meaning of “reproduced”.
The EBA also held that putting a product on the market also made available to the public all “analysable” properties of the product. This may mean that the full internal structure or composition of the product may not be made available, depending on the common general knowledge of the skilled person. It may be that a vital feature of a product’s internal structure or composition is not disclosed, but this does not mean that the product does not form part of the state of the art.
The Board further held that any technical information made publicly available before the filing date, such as in brochures or technical literature, forms part of the state of the art, regardless of whether the product can be “reproduced” in the meaning given by the referring Board.
With this, the EBA has moved away from the enablement-based interpretation in G 1/92 and clarifies that the decisive factor is public availability.
This position is consistent with part of epi’s amicus curiae brief filed in November 2023. epi had argued that, if a product cannot be reproduced without undue burden, only its unreproducible features should not be considered part of the state of the art. epi acknowledged that publicly disclosed technical informationof the type referred to by the EBA, should form part of the prior art.
You can read the full G 1/23 decision of the Enlarged Board here and the epi amicus curiae brief (November 2023) here.