8.9 Discussion of the facts and of the legal position 

A discussion will be held with the party or parties about those technical or legal questions relevant to the decision which, after the parties have made their submissions, do not appear to have been sufficiently clarified or discussed or are seemingly contradictory. Where necessary, it must be ensured that the party or parties file requests which are to the point and that the applicant or proprietor formulates the claims appropriately.

If the examining division finds that some patentable subject-matter would result from amending the claims, it informs the applicant of this and gives them an opportunity to submit amended claims on that basis.

If the competent department intends to depart from a previous legal assessment of the situation with which the parties are familiar or from a prevailing legal opinion, or if facts or evidence already introduced into the proceedings are seen in a different light – e.g. during the deliberations of the examining or opposition division (see E‑III, 8.11) – and the case therefore takes a significant turn, the parties must be informed of this.