5.1. Assessment without regard to the prior art

In order to assess whether the claimed subject-matter was an invention within the meaning of Art. 52(1) EPC 1973, the boards of appeal applied, in their earlier case law, what was called the "contribution approach", according to which an invention had a technical character if it provided a technical contribution to the state of the art in a field not excluded from patentability under Art. 52(2) EPC 1973 (see T 121/85; T 38/86, OJ 1990, 384; T 95/86; T 603/89, OJ 1992, 230; T 71/91; T 236/91; T 833/91; T 77/92). Thus, prior art was taken into account to some extent (T 258/03, OJ 2004, 575; T 769/92, OJ 1995, 525).

Subsequent decisions found any comparison with the prior art to be inappropriate for determining whether or not there was an invention.

In T 1173/97 (OJ 1999, 609) the board consciously abandoned the "contribution approach" and found that compliance with Art. 52(2) and (3) EPC can be established by features already known in the art. Determining the technical contribution an invention achieves with respect to the prior art is more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Art. 52(2) and (3) EPC 1973. In T 931/95 (OJ 2001, 441) it was stated that there is no basis in the EPC for distinguishing between "new features" of an invention and features of that invention which are known from the prior art, when examining whether the invention concerned may be considered to be an invention within the meaning of Art. 52(1) EPC 1973. Thus there is no basis in the EPC for applying the contribution approach for this purpose (see also T 1001/99; T 388/04, OJ 2007, 16; T 619/02, OJ 2007, 63; T 553/02; T 258/03, OJ 2004, 575).

In T 1543/06 the board found that the requirement of technical character was recognised as separate and independent of the remaining requirements of Art. 52(1) EPC 1973, in particular novelty and inventive step, and that compliance with it could therefore be assessed without having recourse to the prior art.

In T 258/03 (OJ 2004, 575; see also T 154/04, OJ 2008, 46), the board stated that the verification that claimed subject-matter is an invention within the meaning of Art. 52(1) EPC 1973 is, in principle, a prerequisite for the examination in respect of novelty, inventive step and industrial application, since these latter requirements were defined only for inventions (see Art. 54(1) EPC 1973, Art. 56 EPC 1973, and Art. 57 EPC 1973). The structure of the EPC therefore suggests that it should be possible to determine whether subject-matter was excluded under Art. 52(2) EPC 1973 without any knowledge of the state of the art (including common general knowledge).

In G 1/19 too, the Enlarged Board of Appeal summarised that the assessment of whether a method involving technical means is an invention within the meaning of Art. 52(1) EPC is made without reference to the prior art (T 258/03; T 388/04). Only in the context of the second hurdle of the two-hurdle test is the invention considered in relation to the prior art.