The United States has a statutory “on-sale bar” whereby the sale of a patented product before the priority date is novelty destroying for a claim to the product per se.[i]
In early July, the European Patent Office (EPO) Enlarged Board of Appeal in G 1/23 (“Solar cell”) considered whether a product put on the market before the priority date of a European patent application can be excluded from the prior art base for novelty and inventive step on the basis that its composition or internal structure could not be analysed and reproduced at the priority date. The answer, a resounding “no”, effectively establishes an “on-sale bar” in Europe.
The Australian Patent Office (APO) in Nuseed Pty Ltd and Norddeutsche Pflanzenzucht Hans Georg Lembke KG v Limagrain Europe [2025] APO 25 (Nuseed) also recently found that the prior sale of a seed that inevitably results in a later patented plant constituted a prior use capable of destroying novelty. But the question remains whether the Australian courts will follow the EPO’s approach.
Background to G 1/23
Under European law, the state of the art for assessing novelty (and inventive step) includes “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“.[ii]
The Enlarged Board in G1/92 previously considered whether the chemical composition of a product made available to the public formed part of the state of the art for novelty in circumstances where no particular reasons can be identified to cause the skilled person to analyse the composition. In that case, the Enlarged Board found there was no basis in law to import a requirement into Article 54(2) EPC that the public have a particular cause to analyse or reproduce the product: “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 …”.[iii]
In interlocutory decision T 438/19, the so-called “reproducibility requirement” arising from G 1/92 was invoked by the patentee to argue that because the composition of a commercially available polymer (ENGAGE® 8400) could not be reproduced by a skilled person at the priority date without undue burden it did not form part of the state of the art.[iv] The opponent, on the other hand, invoked the following analogy:[v]
In the hypothetical situation of a claim merely defining a caramel color containing fizzy drink, could Coca Cola which undoubtedly falls within such definition, not be seen to anticipate such subject-matter? Could it be said that it is not state of the art that Coca Cola contains water, carbon dioxide and caramel color?
The proper interpretation of G 1/92 was referred to the Enlarged Board.
Enlarged Board confirms “on-sale bar”
The Enlarged Board considered there was no doubt that G 1/92 required something to be reproduced without undue burden, the relevant question was whether the composition or internal structure of the product needed to reproducible for the product per se to form part of the state of the art.
The Enlarged Board was of the view that the reproducibility requirement was inherently fulfilled for a product placed on the market because a skilled person could obtain a physical copy of the of the product by purchasing it. In this way, it is not necessary to be able to make the product in order to reproduce it. In other words, reproducibility includes the ability of a skilled person to obtain and possess a product.
Accordingly, the placing of a product on the market (even if later removed) renders that product part of the state of the art for novelty or inventive step, regardless of whether its composition or internal structure was analysable. However, the composition or internal structure itself is only part of the state of the art if it can be analysed (per G 1/92).
The position in Australia
Under Australian law, the prior art base for novelty (and inventive step) includes “prior art information made publicly available in a single document or through doing a single act” (i.e., publication or prior use).[vi]
The circumstances under which a prior use is novelty destroying were previously considered by the Full Federal Court in Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 (Damorgold). In that case, a product was displayed and marketed (but not sold) before the priority date that possessed all of the integers of a later claimed spring assist mechanism for controlling extension and retraction of blinds. The Federal Court summarised the principles for a novelty destroying prior use, including:[vii]
- The act (or prior use) must have been accessible to at least one member of the public in circumstances where that person would be free in law and equity to make use of it as that person saw fit.
- The act must be such that a person of ordinary skill in the art would at once perceive, understand and be able practically to apply the invention without making further experiments or gaining further information before the invention can be made useful.
- The issue is whether what the skilled addressee observes on inspection is sufficient to enable him or her to comprehend the complete invention.
- If there is a missing integer on examination, there may be anticipation if the evidence establishes that the skilled worker would understand that integer to be present as a matter of course and without the application of inventive ingenuity.
Having regard to those principles, the Full Court in Damorgold did not consider the display and marketing of the product to constitute prior use because “an observer of the assembled [] product would not have been equipped with sufficient information to enable the skilled observer to discern what were the essential integers of its working mechanism“.[viii]
APO decision in Nuseed
The relevant question in Nuseed was whether sale of a Brassica plant seed containing a Raphanus single nucleotide polymorphism (SNP) constitutes a novelty-destroying prior use of a claim directed to a Brassica plant seed containing the same SNP, regardless of whether it was known at the priority date that the seed contains the relevant SNP.
The Hearing Officer distinguished the facts in Nuseed over those in Damorgold on the basis that for a mechanical invention it is “necessary to observe all the component parts in a manner that enables the observer to reproduce it“, whereas “to make a plant all that the skilled worker needs to do is grow it from seed“.[ix] Thus, provided the seeds were freely available for purchase by a member of the public before the priority date (which was established by the evidence), the claims were anticipated because the seeds inevitably provided the claimed plant, regardless of whether its genotype was known at the time.
To later claim the plant with reference to its genome was considered akin to “parameteritis”.[x]
Does Australia have an “on-sale bar”?
The Enlarged Board’s decision in G 1/23 has fundamentally changed the way novelty and inventive step are assessed in Europe having regard to a product made available on the market before the priority date. In particular, G 1/23 confirms that an “on-sale bar” also applies in Europe, such that once a product has been made freely available on the market (even if later removed) it is considered reproducible and therefore part of the prior art base.
In essence, the “reproducibility requirement” in Europe is an enablement requirement, which the Enlarged Board confirmed is satisfied when a skilled person can obtain and possess the product; they do not need to be able to make it. In Damorgold, the Australian Full Court acknowledged that an enabling disclosure is required for anticipation, but in that case the patented product was not available for a skilled person to obtain and possess.
Although the Hearing Officer in Nuseed considered it is necessary in the case of mechanical inventions to observe all the component parts in a manner that enables the observer to reproduce it, this reasoning did not have regard to G 1/23 and is not binding in Australia. While European law is also not binding in Australia, it is often persuasive, particularly in the context of assessing sufficiency (enabling disclosure). Therefore, while it remains to be seen whether the Enlarged Board’s reasoning will be adopted by the Australian courts, it seems likely that it (and the Coca-Cola analogy) will hold weight when the matter is next considered.
Australia’s prior secret use provisions also effectively operate as an “on-sale bar”, regardless of whether the sale occurs secretly. In particular, the Full Federal Court has said that secret use is not solely a question of whether a use was secret but “whether what occurred amounted to a de facto extension of the patent term“.[xi]
Patent applicants should be aware that sale of a patented product before the priority date poses a significant risk to validity in Australia, Europe and the US, regardless of whether the composition or internal structure of the product is known. The reasoning in Nuseed in relation to inevitable disclosure is also apt, as a claim may be anticipated by sale of a product the use of which inevitably results later in a patented invention.
If you would like any further information, please contact Claire Gregg.
[i] 35 U.S. Code § 102(a)(1)
[ii] Article 54(2) EPC
[iii] G 1/92 at 4
[iv] In this case, the Technical Board was assessing inventive step under Article 56 EPC, the start of the art for which includes the definition in Article 54(2) EPC in respect of novelty
[v] T 438/19 at [20]
[vi] Patents Act 1990 (Cth), s 7(1)(a)
[vii] Daramgold at [12]
[viii] Daramgold at [63]
[ix] Nuseed at [61]-[62]
[x] Nuseed at [64]
[xi] Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079 at [181]