T 0013/84 - Reformulation of the problem - #82

Citation Rank: 82
No. of citations: 62

The Board in T 13/84 clarified that it is permissible (and sometimes required) that the technical problem stated in the application is re-formulated upon prosecution.

An example for a situation where re-formulation of the technical problem is appropriate is where new prior art is identified during search, and the applicant was not aware of that prior art when drafting the application.

Regarding the conditions under which re-formulation of the problem is admitted in view of Art. 123(2) EPC, T 13/84 stated:

A reformulation of the problem which then may become necessary is not precluded by Article 123(2) EPC if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the prior art which is nearest to the invention.

The technical problem can thus be reformulated in view of the problem objectively solved by the features differentiating the invention from the closest prior art.

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Headnote:

1. The nature of the technical problem solved by the invention has to be determined on the basis of objectively established facts, in particular as appearing in the prior art revealed in 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. A reformulation of the problem which then may become necessary is not precluded by Article 123(2) EPC if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the prior art which is nearest to the invention.
2. Where a two-part form of claim is used the apparatus or process constituting the prior art which is nearest to the invention will in compliance with Rule 29(1)(a) EPC have to figure in the preamble of the claim, stating such features of it as are necessary for the definition of the claimed subject-matter and which are, in combination, already part of this prior art.

The full text of the decision can be found here.