The specific patent claims a material suitable as an encapsulating material for solar cell having a certain composition. The question now is whether a product put on the market before the date of filing of a European patent application is to be excluded from the state of the art for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date.

At a first glance one could think – if the product was there and if it falls under the claim of the later patent application – the product should be novelty destroying or could be a starting point for the consideration of inventive step for the later filed patent application. On the other hand, a patent is obtained only for an enabling disclosure of the invention. The same requirement of enablement should apply to a product that may be state of the art for the later application. If the composition or internal structure of a product cannot be analysed and reproduced, the enabling disclosure is not derivable from the mere existence of the product. As a consequence, it may be correct to disregard said product or at least its specific composition as state of the art. The product or its composition could be regarded as “hidden information” and was, thus, not publicly available. This view seems to be in line with an old decision of the EBoA G2/88: “the question to be decided is what has been “made available” to the public: the question is not what might have been “inherent” in what was made available” to the public.” And:„a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available“. Another important question in this regard arises in the field of biotech inventions: if any “hidden information” was regarded as novelty destroying for later patent applications what would this mean for naturally occurring substances? Would this mean that these are not patentable anymore? This conclusion would be quite detrimental for industry. In this context we should keep in mind that a patent should incentivise investments into innovations. Without patents such investments could not be secured. Who would invest into the development of natural occurring compounds as medicaments if such compounds could not be patented anymore? Therefore, a line must be carefully drawn between what is in fact made available and what “remained hidden” on a case by case basis.

IP-Flash, orginally published in European Biotechnology Magazine Winter 2023