4.2.2 Problem formulated in the patent application as starting point

According to the established case law, an objective definition of the problem to be solved by the invention should normally start from the problem described in the application/contested patent. Only if examination shows that the problem disclosed was not solved or if inappropriate prior art was used to define the problem, is it necessary to investigate which other problem objectively exists (see e.g. T 495/91, T 881/92, T 419/93, T 606/99, T 728/01, T 1708/06, T 1146/07, T 1060/11, T 204/16). In T 400/98, the technical problem set out in the patent had to be reformulated because it had not been credibly solved.

In T 2341/13 the invention related to the hardware implementation of an interleaver. The examining division had considered it problematic that the application suggested that the invention could be used in a communication system based on a standard that was neither publicly available at the priority date nor fully disclosed in the application. The board observed that knowledge of any communication standard was not necessary to carry out the claimed invention and that it was perfectly valid to pose the problem of obtaining interleavers for frame sizes that were not a multiple of 2**(m). The board found that whether the application sufficiently disclosed the advantages of such frame sizes was irrelevant, unless it was argued that the mere idea of using such frame sizes was itself inventive (in which case it could not be included in the problem formulation).

In T 1861/17 the board conceded that some decisions had taken the problem set out in the patent ("subjective problem") as their starting point for defining the objective technical problem (see e.g. T 246/91, T 495/91, T 606/99) but considered that this "objective problem" should normally be formulated only once the closest prior art had been identified. It was only on the basis of the features distinguishing the claimed invention from the closest prior art that the objective technical problem could actually be established in accordance with the established problem-solution approach (see e.g. R 9/14).

In T 1099/16 the board stated that the extent to which a new technical effect underlying the claimed new purpose must be "described in the patent" for the exercise of construing the wording of a claim did not involve considerations of whether the technical effect was sufficiently credibly or plausibly described in the patent, but merely whether it had been described in the sense that a skilled person could recognise what technical effect was underlying the new purpose claimed. The decision whether a technical feature of a claim could be considered to be described in the patent therefore remained to be decided on the facts of the individual case.