4.4.2 Reformulation of the "subjective" into an objective technical problem

According to T 39/93 (OJ 1997, 134), although it is desirable to take the same approach as the applicant regarding the definition of the technical problem (see in this chapter I.D.4.2.2), the technical problem as originally presented in the application or patent, which was to be regarded as the "subjective" technical problem, might require reformulation on the basis of objectively more relevant elements originally not taken into account by the applicant or patentee. This reformulation yields a definition of the "objective" technical problem. The latter represented the ultimate residue (effect), corresponding to the objective contribution provided by the subject-matter defined in the relevant claim.

It is established case law of the boards of appeal that where a specific problem is identified in the description, the applicant or patentee may be allowed to put forward a modified version of the problem particularly if the issue of inventiveness has to be considered on an objective basis against a new prior art which comes closer to the invention than that considered in the original application or granted patent specification (see e.g. T 386/89; T 39/93, OJ 1997, 134; T 165/05; T 716/07).

As a matter of principle, any effect provided by the invention may be used as a basis for reformulating the technical problem, as long as that effect is derivable from the application as filed (T 452/05, T 698/08, T 188/09, T 2483/11, T 605/14, T 1196/12, T 1406/15). A reformulation of the problem also may be appropriate if an alleged effect of a described feature could be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested. In relation to new effects it was not permissible to change the nature of the invention (T 13/84, OJ 1986, 253; T 344/89; T 767/02; T 698/08).