a) General principles and relationship with Article 123(2) EPC

As has been established in the case law of the boards of appeal (see in this chapter at I.D.4.4.2), any technical 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.

A reformulation of the problem is thus not precluded by Art. 123(2) EPC 1973 if the problem can be deduced by the skilled person from the application as filed when considered in the light of the closest prior art (T 13/84, OJ 1986, 253; T 469/90; T 530/90; T 547/90; T 39/93, OJ 1997, 134; T 375/93; T 687/94; T 877/06).

In T 818/93 the board added that it sufficed if the reformulated problem could be deduced later by comparing the application with the closest prior art. Since features from the drawings might be incorporated into the claims, and also into the description in support of the claims (referring to T 169/83, OJ 1985, 193), those features' effects and advantages might also be used as a basis for reformulating the problem, provided this problem could clearly be deduced from the above comparison.

In T 184/82 (OJ 1984, 261) doubt was cast on the general validity of the statements in the specification and examples (hot bacon test) which suggested that the specific problem had been successfully solved by the invention. Nevertheless, the board found the person skilled in the relevant art would have recognised that the original problem was not unrelated to the more general aim of improving the heat and solvent resistance of materials for containers. The board stated in its Headnote that technical success at a general level could replace failure at a more specific level when assessing the effect of the invention provided the skilled person could recognise the same as implied or related to the problem initially suggested. See also T 732/89, T 106/91, T 767/02.

In T 1422/12 claim 1 related to crystalline forms of tigecycline. The formulation of the technical problem to be solved fell well within the framework of the invention as disclosed in the application in suit. The board noted that any effects may be taken into account, so long as they concerned the same field of use and do not change the character of the invention (see T 440/91). That a more specific problem of improved stability with respect to epimerisation was not mentioned in the application as originally filed was irrelevant since improvement of stability by avoidance of epimerisation, and, as a consequence, improved biological activity was clearly recognisable by the skilled person as a desirable effect for a tetracycline antibiotic from the application as originally filed (see also T 39/93, OJ 1997, 134).

In T 564/89 the appellant (opponent) submitted that any amendment of the technical problem had to be in line with Art. 123(2) EPC 1973. The board stated that this article was not concerned with the issue of whether or not an objectively reformulated technical problem could be used in the course of the so-called problem-solution approach. Art. 123(2) EPC 1973 would only come into play if an amended technical problem were incorporated into the description itself. See also T 284/98, T 276/06.