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Case Law of the Boards of Appeal

 
 
c)
Some consequences of abandoning the contribution approach 

It is the established case law of the boards of appeal that for the purposes of Art. 52(2) EPC the claimed subject-matter has to be considered without regard to the prior art (T 1173/97, OJ 1999, 609, T 258/03, OJ 2004, 575, G 3/08, OJ 2011, 10). Any comparison with the prior art was found to be inappropriate for determining whether or not an invention was present.

Over a series of decisions the boards of appeal (and in particular Board 3.5.01) explored the consequences of abandoning the contribution approach (see G 3/08, OJ 2011, 10).

In T 931/95 (OJ 2001, 441), the board decided that an apparatus for carrying out an activity excluded as such from patentability by Art. 52(2) and (3) EPC 1973 was not itself excluded from patentability. In particular, a claim directed to a computer loaded with a program was not excluded from patentability by Art. 52(2) EPC 1973 even if the program itself would be, i.e. if the program caused no "further technical effect" when run. That decision did not however extend the logic to methods employing technical means (Headnote 2). With regard to methods, this decision was explicitly overturned by T 258/03 (Headnote 1); T 258/03 came to the conclusion that any claim involving technical means was not excluded from patentability by Art. 52(2) EPC 1973 (see points 3 and 4 of the Reasons), and since a claim directed to a method of operating a computer. T 424/03, finally extended the reasoning applied in T 258/03 to come to the conclusion that a claim to a program ("computer executable instructions" in the claim in question) on a computer-readable medium also necessarily avoids exclusion from patentability under Art. 52(2) EPC 1973 (see Catchword 2 and point 5.3 of the Reasons).