The discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter in spite of the fact that the claimed solution was retrospectively trivial and in itself obvious (see T 2/83, OJ 1984, 265; T 225/84). The posing of a new problem did not represent a contribution to the inventive merits of the solution if it could have been posed by the average person skilled in the art (T 109/82, OJ 1984, 473). It also had to be taken into consideration that it was the normal task of the skilled person to be constantly occupied with the elimination of deficiencies, the overcoming of drawbacks and the achievement of improvements of known devices and/or products (see T 15/81, OJ 1982, 2; T 195/84, OJ 1986, 121; T 455/91, OJ 1995, 684).
In T 532/88 the board confirmed the established principle that to address a problem simply by looking for ways of overcoming difficulties arising in the course of routine work did not constitute inventiveness. Following this case law, the boards held in T 630/92, T 798/92, T 578/92, T 610/95, T 805/97, T 1417/05 and T 2303/11 that the posing of the problem could not confer any inventive merit on the claimed subject-matter. Inventive step was however acknowledged in T 135/94, T 540/93, T 1236/03, T 764/12, T 1201/13 and T 2321/15 on the ground (also) that the posing of the problem was not obvious.
In T 252/10 the board noted that the absence of a hint in the prior art that there might still be a desire for further improvement did not mean that an unrecognised problem had been discovered.
In T 971/92 the board emphasised that the appreciation of conventional technical problems which formed the basis of the normal activities of the notional person skilled in the art, such as the removal of shortcomings, the optimisation of parameters or the saving of energy or time, could not involve an inventive step. The appreciation of a technical problem could thus only contribute to the inventive step in very exceptional circumstances. However, if an applicant nevertheless wished to rely on an assertion that the inventive activity resided in the recognition of a technical problem to which the solution was admittedly obvious, then the minimum requirement to be met was that this technical problem be clearly and unambiguously disclosed in the application as filed (see also T 43/97, T 1417/05).
In T 566/91 the invention related to a soft nystatin pastille formulation for treatment of candidiasis in the oral cavity. In the case in point the board did not agree with the submission by the appellants that the technical problem underlying the contested patent consisted in the unrecognised problem of poor patient compliance, as the average skilled person could have posed that problem where – as in that particular case – one necessarily came to light when an object or product was used. Consequently, a problem which amounted to no more than noticing obvious non-compliance with an obvious desideratum in a given situation, namely poor patient compliance using nystatin formulation as a result of the unpleasant taste of the active substance, could not be retained as the actual problem to be solved.
In T 764/12 the technical contribution of the patent in suit resided in identifying a problem which was hitherto not recognised in the prior art, namely the need for protection during storage at ambient environmental conditions of a chewing gum base comprising environmentally degradable polymers. The arguments of the opponent that the claimed invention lacked inventive step because the coating was well known to reduce degradation over time were not relevant. Referring to T 2/83 (OJ 1984, 265) the board acknowledged an inventive step because the perception of the problem had to be considered as being the main contribution to the inventive merits of the solution claimed.