10.8.4 Assessment of inventive step where unexpected effect solves a further technical problem

The board in T 936/96 held that, once a realistic technical problem had been defined and once it had been established that a particular solution to such a problem would have been envisaged by a skilled person in the light of the relevant state of the art, that solution could not be said to involve an inventive step, and this assessment was not altered by the fact that the claimed invention inherently also solved further technical problems. In the case in point the claimed surprising effect could not be regarded as an indication of the presence of an inventive step. See also T 1491/20, in which the board held that if an alternative was obvious when addressing the problem to be solved, it was immaterial that the obvious alternative also had other beneficial effects, even if these were not immediately apparent.

In T 170/06 the board held that if it was obvious for the skilled person to combine prior art teachings in order to solve an essential part of the problem, the presence of even an unexpected extra effect allowing another part of the problem to be solved at the same time did not in principle imply the presence of inventive step.