Referral G 1/23 (T 438/19): clarification on how to construe G 1/92?

By Johannes Möller, Kathrin Aftahy and Georg Anetsberger, Bardehle Pagenberg

1. Background

This appeal concerns the decision of the Opposition Division rejecting the opposition against European patent EP 2 626 911. Its claim 1 specifies a material that is suitable for encapsulating a solar cell and comprises certain polymer constituents, physical properties and a specific aluminum content.

In the case under appeal, the Board found that the inventive step of the subject matter of claim 1 hinges on the question whether the product ENGAGE® 8400 was “made available to the public” within the meaning of Art. 54(2) EPC. It was undisputed that documents D1, D2, D5/5a (all except D5 having been published before the earliest priority date) demonstrate that the copolymer ENGAGE ® 8400, which was commercially available before the earliest priority date, comprises all the properties of the claimed material except its aluminum content. D1 specifically referenced D18 as a document describing the preparation of ENGAGE® 8400, and D18 also discloses a level of aluminum overlapping with the range defined in claim 1.

However, the question was to which extent the commercial availability also led to the product being “available to the public”.

The entire contribution can be read here.
More information regarding the referral can be read here.