T 2662/22 - When to present the auxiliary inventive step attack?

Key points

• If you present a novelty attack in a Notice of opposition, should you add an inventive step attack for the same document?
• "In the present case, it is not disputed that the opponent did not argue lack of inventive step starting from D3 in its opposition notice, it was only used to argue lack of novelty (cf. opposition notice, pages 4, 5 and 6). The inventive step objection was late filed in opposition. The opposition division (see its impugned decision, section 4.4) exercised its discretion under Article 114(2) EPC not to admit this objection into the proceedings."
• "Whether the objection was first made at the oral proceedings (cf. minutes point 17) or with the opponent's letter of 29 April 2022, since the latter date is well after the 9 month opposition period, in both cases the objection would be late filed."
• "In considering admittance of the late filed inventive step objection based on D3, the opposition division considered its prima facie relevance (see impugned decision, section 4.4 and minutes point 21), which is the correct principle to apply (see Guidelines for examination at the EPO, E-VI-2). That the appellant-opponent may not agree with the opposition division's conclusion does not render the principle applied by the opposition division wrong. Moreover, the matter was discussed with the parties at the oral proceedings, so they were heard. Therefore, in exercising its discretion, the opposition division appears to have applied the right principles and to have done so in a reasonable way. Therefore, the Board does not intend to overrule how the opposition division exercised its discretion."
•  The paragraph is a quote from the preliminary opinion of the Board, which was included as a ground in the Board's decision.
• " Neither in written proceedings nor at the oral proceedings did the parties comment on this part of the communication. Nor did the Board see any reason to revise its preliminary opinion. Therefore, the Board decided not to admit the objection"
• As a comment, we should perhaps not make too much out of a decision where the appellant does not contest the preliminary opinion of the Board. But to me, I think it makes sense to first await which distinguishing features the proprietor identifies for a novelty attack in their reply under Rule 79 EPC before the opponent is required to present an auxiliary inventive step attack. 
• The OD's decision is, of course, there, and it would be good to know what the current practice is of the ODs. However, the Board does not discuss the decision of the OD in great detail. 
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EPO 

The link to the decision can be found after the jump. 

https://www.epo.org/en/boards-of-appeal/decisions/t222662eu1