5.2 Formulation of the objective technical problem 

The second stage is to objectively establish the technical problem to be solved by studying the application (or the patent), the closest prior art and the differences (also called "the distinguishing features" of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art, identifying the technical effect resulting from the distinguishing features and then formulating the technical problem.

Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of an invention cannot support a finding of an inventive step (see T 641/00). Such a situation can occur for instance if a feature only contributes to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability. For the treatment of claims comprising technical and non-technical features, see G‑VII, 5.4. The criteria for determining whether a feature, even if non-technical in isolation, contributes to producing a technical effect in the context of the invention are explained in G‑II, 3 and its subsections for different types of subject-matter listed under Art. 52(2).

In the context of the problem-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to achieve the technical effects that the invention offers over the closest prior art. The technical problem thus defined is often referred to as the "objective technical problem".

The objective technical problem identified in this way may not be what the applicant presented as "the problem" in the application. That problem may need to be reformulated, since the objective technical problem is based on objectively established facts, in particular those apparent from the prior art revealed over the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. Alternatively, it may also be possible to rely on technical effects submitted subsequently during the proceedings by the applicant (see G‑VII, 11). Reformulation In certain situations, reformulation might make the objective technical problem less ambitious than originally envisaged in the application. An example would be where the originally stated problem is the provision of a product, process or method demonstrating some improvement, but there is no evidence that the claimed subject-matter is thereby improved over the closest prior art identified in the search and instead there is only evidence with respect to more distantly related prior art (or possibly none at all). In this case, the problem has to be reformulated as the provision of an alternative product, process or method. The obviousness of the claimed solution to that reformulated problem must then be assessed in the light of the cited prior art (see T 87/08).

The extent to which the technical problem can be reformulated has to be assessed on the merits of each particular case. As a rule, any effect provided by the invention can be taken as a basis for reformulating the technical problem, as long as it is derivable from the application as filed (see T 386/89). It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided the skilled person, having the common general knowledge at the effective date of filing date in mind, and based on the application as originally filed, would consider the effect in question to be encompassed by the technical teaching and embodied by the same originally disclosed invention (see G‑VII, 11 and G 2/21, Headnote II). This means that the effect need not be literally disclosed in the application as originally filed (T 116/18, Reasons 11.10). Furthermore, the two criteria "encompassed by the technical teaching" and "embodied by the same originally disclosed invention" need to be met cumulatively (T 1989/19, Reasons 3.3.8).

The objective technical problem must be formulated in such a way that it does not contain pointers to the technical solution, because including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view of inventive activity (see T 229/85). However, where a claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved, in particular as a constraint that has to be met (see G‑VII, 5.4 and G‑VII, 5.4.1).

The expression "technical problem" is interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art. This means that the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective. A technical problem may be regarded as solved only if it is credible that substantially all claimed embodiments exhibit the technical effects on which the invention is based. The criteria for deciding whether lack of reproducibility of the claimed invention is to be dealt with under Art. 56 or Art. 83 are explained in F‑III, 12.

Sometimes, the objective technical problem must be regarded as an aggregation of several "partial problems", e.g. where no technical effect is achieved by all the distinguishing features taken in combination, but rather several partial problems are independently solved by different sets of distinguishing features (see G‑VII, 6 and T 389/86).