h) Fresh ground for opposition on appeal 

Grounds for opposition submitted for the first time on appeal may be considered only with the patent proprietor's consent. If the patentee has not consented to a fresh ground's introduction into the proceedings, the board's decision must not deal with it in substance at all and may mention only that it has been raised (see G 10/91 and G 9/91, OJ 1993, 420; G 1/95, OJ 1996, 615). In G 7/95 (OJ 1996, 626) the Enlarged Board of Appeal held that lack of novelty and lack of inventive step, albeit both falling under Art. 100(a) EPC, were different legal grounds for opposition.

On the introduction of fresh grounds for opposition into opposition proceedings, see chapter IV.C.3.4.

In T 1571/12 the patent proprietor consented at the oral proceedings before the board to the introduction of a fresh ground for opposition, namely that the invention could not be carried out (Art. 100(b) EPC). The board remitted the case to the department of first instance for an answer to the highly relevant question of whether the claimed subject-matter was sufficiently disclosed for it to be carried out.

In T 350/13 the opponent's argument, that the proprietor had implicitly given its approval with respect to Art. 100(c) EPC by arguing in response to the opponent's objections, was not persuasive in admitting this ground for opposition. Irrespective of the patent proprietor at some time responding substantively to the new ground, this could not be interpreted as an implicit or binding indication that it approved the introduction of this ground into the appeal proceedings.

An appeal unconnected with the reasons given in the appealed decision (lack of inventive step) and directed only to a new ground for opposition (lack of novelty) based on a new document is contrary to the principles laid down in decisions G 9/91 and G 10/91 (OJ 1993, 408 and 420), according to which an appeal should be within the same legal and factual framework as the opposition proceedings. It is tantamount to a new opposition and is thus inadmissible (T 1007/95, OJ 1999, 733).

In T 27/13 the board held that the objection under Art. 83 EPC in the statement of grounds constituted a fresh ground for opposition under Art. 100(b) EPC that was outside the legal framework of the opposition proceedings. The board pointed out that it could find the present appeal admissible only if the same ground for opposition was raised when the appeal was filed. Only then could there be any discussion of the possibility of introducing a fresh, additional ground for opposition. Hence the appeal was inadmissible.

In T 1029/14 the first time that the appellant argued that the subject-matter of claim 1 lacked an inventive step was during appeal proceedings, two working days before the oral proceedings. This objection was not admitted into the proceedings pursuant to Art. 13(3) RPBA 2007. The board further questioned whether the line of attack starting from D1 as the closest prior art could be discussed at all in the appeal proceedings without the agreement of the patent proprietor. The appellant argued that the objection concerning inventive step starting from D1 did not constitute a fresh ground of opposition and could be examined in appeal proceedings without the agreement of the patentee, since D1 had been used to attack novelty. The board referred to the similar case T 448/03 in which inventive step was not discussed at all in the opposition proceedings, but for the first time in the appeal proceedings. In T 448/03 it was concluded that an objection concerning inventive step was to be considered a fresh ground if it was raised for the very first time in the appeal proceedings, irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

In T 184/17 the board held that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step could exceptionally be examined in the appeal proceedings without the agreement of the patent proprietor, if it stayed within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the case in hand, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked on appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same.