3.2. Subject-matter under examination

In T 184/17 the respondent (opponent) for the first time raised an inventive step objection which was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings. The appellant (patent proprietor) submitted that the inventive step objection constituted a fresh ground for opposition and did not consent to its introduction into the appeal proceedings, see G 10/91. According to G 10/91 (OJ EPO 1993, 408) a fresh ground for opposition (a ground neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings) may in principle not be introduced at the appeal stage. The Enlarged Board held that an exception to this principle was justified if the patent proprietor agreed to its introduction. The board stated that the new objection relied on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised on appeal stayed within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Art. 100(a) EPC for novelty. The board raised the question as to whether under such special circumstances, the new objection still fell under the principle as expressed in G 10/91, or whether it could be admitted into the appeal proceedings without the agreement of the patent proprietor. In the board's view what was decisive was that both lack of novelty and lack of inventive step were argued within the same factual and evidentiary framework, meaning that the passages and teachings relied upon by the opponent for substantiating both objections as well as the main body of the argument were the same, but only the legal conclusions drawn therefrom differed. 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.