The problem-solution approach revisited (II): More on technical problems and effects

Abstract At the EPO, an inventive step is generally assessed on the basis of the problem-solution approach (PSA), which frames what the skilled person would have found obvious in terms of a ‘story’ about the skilled person, the prior art and the invention. A central aspect of the PSA is the determination of a ‘technical effect’ which the claimed invention has over the prior art and the idea that the skilled person is driven by the ‘objective technical problem’ (OTP) of achieving this effect. This article discusses which technical effects may be taken into account within the framework of the PSA so as to produce a realistic and thus convincing story. It also considers which impact the patent application or patent itself has on the technical effects which may or may not be considered in the assessment of an inventive step. Finally, this article reflects upon the role of the patent application or patent in the PSA as generally presented and, in this context, upon the question of what constitutes the ‘invention’, in the sense of that for which a patent may eventually be granted.