In its decision Gelenkanordnung (Xa ZR 36/08) the German Federal Supreme Court BGH has ruled that the description must not be used to give an unduly restrictive meaning to a claim, in particular when determining the technical problem underlying the claimed invention.
In European practice, the technical problem that an invention aims to solve is of particular relevance. For example, assessment of inventive step is usually done on the basis of whether or not the skilled person, when faced with the technical problem, would have arrived at the invention in an obvious manner. Therefore, the correct determination of the technical problem is crucial.
In the present case, a German Appeal Court had determined the technical problem based on statements in the description. The BGH reversed the decision and held that although statements in the description could provide a hint, the technical problem had to be determined based on the actual technical effects that the claimed features are considered to achieve.
This decision is not inconsistent with the approach set out in the EPO Guidelines on Examination (specifically Guideline C-IV, 11.5.2), but the EPO is generally more rigid. The determination of an "objective" technical problem may not be what the applicant presented as "the problem" in his application and some other effect provided by the invention may be used as a basis for a reformulation of the technical problem, but the EPO requires that the effect is derivable from the application as filed.