## Facts

- The European Patent Office (EPO) granted Société des Produits Nestle S.A. (Nestlé) a European patent directed to a process for making probiotics-enriched pet food.
- Mars UK and another food-products company filed an opposition seeking revocation of the patent.
- In the opposition-appeal proceedings, the opponents relied on a probiotics-enriched pet-food product that had been marketed several years before Nestlé filed its patent application.
- The opponents submitted evidence that Nestlé’s claimed process used the same key features used to make the earlier marketed product.
- The opponents further contended that a skilled person could determine what the earlier product contained and, from that information, infer how it was made.
- The earlier product’s packaging identified its ingredients, and the opponents also argued that—even without the packaging—a skilled person could identify the ingredients through routine chemical analysis.
- The dispute on appeal focused on whether the earlier marketed product made the claimed process available to the public for novelty purposes under the European Patent Convention (EPC).

## Issues

1. Whether a probiotics-enriched pet-food product that was commercially marketed before Nestlé’s filing date was “made available to the public” and therefore part of the state of the art under Article 54(2) EPC.
2. Whether the earlier product anticipated Nestlé’s claimed process when a skilled person could determine the product’s ingredients from labeling or routine chemical analysis and infer the key process features from what the product contained.
3. Whether the ability to determine the relevant features depended on undue effort, or instead fell within routine work for the skilled person.

## Decision

- The Board treated the earlier marketed pet-food product as prior art made available to the public under Article 54(2) EPC.
- The Board accepted that the earlier product’s ingredients were disclosed by the packaging and, in any event, could be identified by routine chemical analysis.
- The Board determined that, based on the identifiable ingredients and common general knowledge, a skilled person could infer the key features of the manufacturing process used for the earlier product.
- Because the claimed process employed the same key features as the process derivable from the earlier marketed product, the Board found the claimed process lacked novelty under Article 54 EPC.
- The Board therefore decided against Nestlé’s patent in the opposition-appeal proceedings (the patent was not maintained in the form sought by Nestlé).

## Legal Principles

- A product sold on the open market before the filing date can constitute prior art as a product “made available to the public” under Article 54(2) EPC.
- Public availability is not limited to written disclosures; it includes technical information that a skilled person can directly and unambiguously derive from a publicly available product, including by standard analytical methods.
- If a product’s ingredients or composition can be determined from labeling or routine analysis, those features are treated as publicly available for novelty analysis.
- A process claim can lack novelty where the essential process features are derivable from the prior marketed product’s identifiable composition and the skilled person’s common general knowledge, without requiring non-routine work.

## Conclusion

In T 0690/04, the EPO Board of Appeal held that a probiotics-enriched pet-food product marketed before Nestlé’s filing date formed part of the state of the art and anticipated Nestlé’s process claim because the product’s ingredients were disclosed on the packaging (or could be identified by routine analysis) and the key process features could be inferred from what the product contained, resulting in a finding of lack of novelty under Article 54 EPC.


Société des Produits Nestle S.A., T 0690/04-3.3.09 (2007)