4. Technical problem
Overview
4. Technical problem
Following the selection of the closest prior art and the assessment of the technical effects achieved by the claimed invention in comparison with the closest prior art, the next step of the problem and solution approach is to define the objective technical problem (see in this chapter I.D.4.1 and I.D.4.2).
The "subjective" technical problem as originally presented by the applicant (R. 42(1)(c) EPC) might require reformulation on the basis of objectively more relevant elements originally not taken into account by the applicant or patentee, or where the combination of features in the claim do not solve this problem over the whole area defined in the claim. This reformulation then defines the "objective" technical problem. Reformulation might lead to the objective technical problem being less ambitious than originally envisaged by the application. See in this chapter I.D.4.4.
See also the Guidelines, G‑VII, 5.2 – March 2022 version.
- T 605/20
Catchword:
The undesired phenomena observed in the patent with the use of the prior art compositions would not inevitably manifest themselves upon the practical implementation of the teaching of the prior art. The recognition of the relevance of these phenomena should therefore be considered to form part of the technical contribution described in the patent. A specific reference in the formulation of the objective technical problem to the avoidance of these phenomena risks to unfairly direct development towards the claimed solution, which is not permissible in line with the principles as developed in the established jurisprudence (see reasons section 4.2.3).
- T 2622/19
Catchword:
As to the application of the problem-solution approach, in particular the determination of the objective technical problem and the choice of the "second document", see points 6.3.2 and 6.3.4 of the Reasons.
- T 1001/18
Catchword:
Since the problem and solution approach defines the problem based on the effect of the differences from the closest prior art, and the effect is derived primarily from the disclosure of the invention, the effect documented in the present documents alone is taken as the basis for the problem formulation. The Board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation (reasons 5.3.2)
- G 2/21
Headnote:
I. Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date. II. A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings