m) New objections or defence in response to views in the opposition decision that had already been set out in the preliminary opinion

The boards have repeatedly indicated that filing new documents on appeal is not to be regarded as a direct response to the decision of the opposition division, if the finding the to which the party is reacting had already been expressed by the opposition division in its preliminary opinion (T 2973/19, T 892/21; see also T 882/21, in which the board also took into account that the opposition division's preliminary opinion had deemed all the other inventive step attacks not convincing).

In T 2973/19 the board saw no convincing reason why the inventive step attack starting from D14 was not already raised in the opposition proceedings. The opposition division had indicated in the annex to the summons that the subject-matter of the claims of the main request was novel also in view of D14.

In T 892/21 the board dealt with the admittance of experimental data (D22), which according to the appellants (patent proprietors), had been filed to address a reason given in view of Art. 56 EPC in the appealed decision, namely the lack of evidence proving a certain technical effect. However, the opposition division had already pointed to the absence of this experimental evidence in its preliminary opinion. The board stressed that a further circumstance speaking against the admittance of D22 was that the respondent had disputed the meaningfulness of the experimental data it related to. Thus the admission of this document would have rendered the case substantially more complex.