Difficulties in the determination of the objective technical problem

Defining the objective technical problem is probably the most important part of the problem-solution approach, which is commonly used particularly in Europe to determine whether a new invention has inventive step.

The objective technical problem is the problem that is solved by the invention to be evaluated, but not solved by the publication considered to represent the closest prior art.

For example, the objective technical problem can be defined as how to improve the solution described by the closest prior art, or it can be defined as how to achieve a certain desired effect in an alternative manner.

In defining the objective technical problem, the point of comparison should be only the publication that has been selected to represent the closest prior art. At this point no other prior art should be considered, no matter how well known. This alone has already proven to be challenging.

Also other difficulties can be encountered when defining the objective technical problem. The definition should refer to some improvements or advantages achieved using the invention to be evaluated, and although this improvement or advantage is not required to be explicitly mentioned in the patent application, it should still somehow be apparent based on the application that such an effect is achieved.

For example, if arguments in favor of inventive step refer to the effect of a particular chemical agent in a particular context, it is sufficient if it is commonly known that said agent has said effect in said context.

Such required effects are, however, not always commonly known.

Although the advantages achieved using the invention are regularly referred to in patent applications, these do not necessarily include the specific advantages that are used in defining the objective technical problem. One possible reason for this is that the advantages used to define the objective technical problem should be ones that are achieved specifically in view of the closest prior art. The closest prior art might, however, not have been known by the applicant when drafting the patent application.

In defining the objective technical problem, any features of the invention, which fail to provide a technical effect (non-technical features), should be disregarded. Such features include, among others, features relating to:

discoveries,
scientific theories,
mathematical methods,
aesthetic creations,
business methods,
computer programs and
presentation of information.

It is, however, not always a simple task to determine which features are non-technical. In practice, most features of inventions have some impact on the overall technical effect of the invention, even if they, as such, are non-technical.