T 1656/17 of 13.01.2023

Board limited to examine objections of lack of inventive step dealt with in the appealed decision (no)
Re-opening the debate on the main request (no)
Re-opening the debate on auxiliary request 1 (yes, but only on a specific point)
Oral submissions by an accompanying person (yes)
Postponement of the oral proceedings (no)
Reply to the statement of grounds of appeal - sufficient substantiation of objections of lack of inventive step (yes)
Evidence - amendment after summons
Evidence - admitted (yes)
Evidence - exceptional circumstances (yes)
Auxiliary request 3a - amendment after summons - admitted (yes) - exceptional circumstances (yes)
Remittal to the opposition division
Remittal - (no)
Main request (patent as granted) - inventive step - (no)
Auxiliary requests 1, 2, 3a, 4, 6 - inventive step - (no)
Auxiliary request 5 - amendments - added subject-matter (yes)
Objections 1 to 6 under Rule 106 EPC - all dismissed

There is no legal basis in the EPC or the RPBA (in the versions of 2007 and 2020) that prevents the board from examining in the case at hand an objection of lack of inventive step raised by the respondent in the appeal proceedings against the patent as granted or as amended that was not addressed in the decision under appeal. Nor does the case law prevent the board from doing so. This means that the board may examine whether such an objection is substantiated, whether it should be admitted into the appeal proceedings and whether it prejudices the maintenance of the patent as granted or as amended, as the case may be. (See section 2 of the Reasons)