What should examiners do when they identify unclaimed patentable subject matter in a patent application?
When patent examiners identify patentable subject matter that hasn’t been claimed in an application, they should take proactive steps to inform the applicant. The MPEP 707.07(j) provides guidance:
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, the examiner 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 practice helps applicants identify potentially valuable aspects of their invention that may have been overlooked. It can lead to stronger patent protection and more comprehensive claims, benefiting both the applicant and the patent system as a whole.
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