T1620/23 - Inventive step as new ground (?)

Key points

• The Board, in translation: "The ground for opposition of lack of inventive step pursuant to Article 100(a) in conjunction with Article 56 EPC was mentioned in the notice of opposition dated 30 August 2021, but not substantiated in accordance with Rule 76(2)(c) EPC. Rather, the opponent reserved the objection of lack of inventive step for a later stage of the proceedings, should this objection become relevant due to new requests (notice of opposition, page 11). Accordingly, no statement was made regarding the question of the lack of inventive step in claim 1 as granted."
• The claim was attacked as not novel, I understand.
• The OD found the claims to be not novel. "the opponent did not make any statements regarding the lack of inventive step of the granted patent in the further course of the opposition proceedings."
• The Board finds the claim to be novel (contrary to the OD). The opponent would like to attack the claim for lack of inventive step.
• "The opposition ground of lack of inventive step under Article 100(a) in conjunction with Article 56 EPC – which, according to the decision of the Enlarged Board of Appeal G 7/95, is to be distinguished from the opposition ground of lack of novelty – was therefore not effectively raised by the opponent. The Opposition Division also did not introduce this opposition ground into the proceedings pursuant to Article 114(1) EPC. In particular, the Opposition Division's decision on claim 1 of the granted version of the patent was limited to the lack of novelty of the subject-matter. If the opposition ground is neither asserted and substantiated in the notice of opposition nor introduced into the proceedings by the Opposition Division, a "new opposition ground" exists according to G 1/95 and G 7/95, in each case reason 5.3. In appeal proceedings, such a new opposition ground may, according to decision G 10/91, only be examined with the consent of the patent proprietor."
• "The patent proprietor refused to consent to the examination of this ground for opposition. The ground for opposition of lack of inventive step may therefore not be examined in the appeal proceedings (G 10/91, principle 3). 
• Cf. T 131/01, published in the OJ: "In a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to Rule 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee"
• As discussed in  Visser's Annotated EPC, Rule 76(2):4.3.3, incidentally. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t231620du1