What should examiners do when they identify patentable subject matter that hasn’t been claimed?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When examiners identify patentable subject matter that hasn’t been claimed, they should take a constructive approach. The MPEP advises:

“If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.”

This guidance encourages examiners to provide helpful feedback to applicants, potentially leading to stronger patent applications.