T 1980/22 - The prevailing proprietor and Art. 12(6) RPBA

Key points

• The OD finds the claims as granted to be allowable and rejects the opposition.
• The Board finds the claims of the main request to lack an inventive step. 
• AR-4 to 6 were filed with the reply of the proprietor/respondent to the appeal.
• The Board, in translation: "The board decided to admit auxiliary requests 4 to 6 into the proceedings. In doing so, it took into account in particular that there had been no specific reason for the respondent to file them in the opposition proceedings, especially since the opposition division followed the respondent's argumentation. These requests are therefore not to be regarded as requests that "should have been filed" in the opposition proceedings (see Article 12(6), second sentence, RPBA). The change made in auxiliary requests 4 to 6 compared to auxiliary requests 1 to 3 also represents an appropriate line of defence, which also does not increase the technical complexity of the case."
• The Board remits the case. "According to Article 111(1), second sentence, EPC, the Board of Appeal may either decide itself or refer the case back to the Opposition Division for further prosecution. In the present case, referral is appropriate because the subject-matter of the claim has been moved from a "brake pad for a fixed calliper brake" to a "fixed calliper brake with a brake pad" and this changed subject-matter was neither part of the decision to be reviewed by the Board of Appeal nor are there any detailed submissions by the parties on this subject-matter."

• EPO 

The link to the decision  can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t221980du1