5.4.1 "Requirements specification" in the fFormulation of the objective technical problem

Features which do not contribute to the technical character or do not make any contribution, either independently or in combination with other features, to the technical solution of a technical problem are not relevant for assessing inventive step (see T 641/00). Such a situation may arise, for instance, if a feature contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability.

The objective technical problem must be a technical problem which the skilled person in the particular technical field might have been asked to solve at the relevant date. It should not be formulated in such a way as to refer to matters of which the skilled person would only have become aware by knowledge of the solution claimed (G‑VII, 5.2). However, this principle applies to those features of the subject-matter claimed which contribute to the technical character of the invention and hence are part of the technical solution. Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00).

Where aspects of a claim define an aim to be achieved in a non-technical field and thus do not contribute to the technical character of the invention, this aim may legitimately appear in the formulation of the objective technical problem In other words, the formulation of the objective technical problem may refer to features which do not make a technical contribution, or to any non-technical effect achieved by the invention, as a given framework within which the technical problem is posed, for example in the form of a "requirements specification" (i.e. a complete description of the behaviour of the system to be developed) provided to the person skilled in a technical field.as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met. The aim of formulating the technical problem according to these principles is to ensure that inventive step is acknowledged only on the basis of features which contribute to the technical character of the invention. If no such objective technical problem is found, the claimed subject-matter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art, and the claim is to be rejected on this ground.

The objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity. The requirements specification is not deemed to belong to the prior art; it is merely used in the formulation of the technical problem.

The technical effects used for formulating the objective technical problem have to be derivable from the application as filed when considered in the light of the closest prior art (G‑VII, 5.2).

In the case of claims directed to a technical implementation of a non-technical method or scheme, in particular of a business method or game rules, a modification to the underlying non-technical method or scheme aimed at circumventing a technical problem, rather than addressing this problem in an inherently technical way, is not considered to make a technical contribution over the prior art (T 258/03, T 414/12). Rather, such a solution constitutes a modification to the constraints given to the technically skilled person tasked with the implementation of the given non-technical method or scheme.

In such cases, consideration should be given to any further technical advantages or effects associated with the specific features of the technical implementation over and above the effects and advantages inherent in the underlying non-technical method or scheme. The latter are at best to be regarded as incidental to that implementation (T 1543/06). They do not qualify as technical effects for the purpose of defining the objective technical problem.

Example

In a game played online over a distributed computer system, the effect of reduction in network traffic obtained by reducing the maximum number of players cannot form the basis for formulating the objective technical problem. It is rather a direct consequence of changing the rules of the game, which is inherent in the non-technical scheme. The problem of network traffic reduction is not addressed by a technical solution but circumvented by the non-technical gaming solution offered. The feature defining the maximum number of players thus constitutes a given constraint which forms part of the non-technical scheme that the skilled person, e.g. a software engineer, would be tasked to implement. Whether the claimed specific technical implementation would have been obvious to him would still have to be assessed.

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