Discussion of the facts and of the legal position 

A discussion will be conducted with the party or parties concerning those technical or legal questions which are relevant to the decision and 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 results from a limitation or an amendment of the claims, it informs the applicant of the fact and allows him an opportunity to submit amended claims based thereon.

If the competent department intends to depart from a previous legal assessment of the situation with which the parties are acquainted 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) – so that the case takes a significant turn, and there have not been any discussions on that during oral proceedings, the parties must be informed thereof.

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