What should patent examiners include in the first Office action on the merits?
In the first Office action on the merits, patent examiners are expected to provide comprehensive feedback on the application. According to MPEP 707.07(d):
“The examiner should, as a part of the first Office action on the merits, identify any claims which he or she judges, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.”
This guidance encourages examiners to not only point out deficiencies but also to provide constructive feedback. By identifying potentially allowable claims or suggesting amendments, examiners can help applicants understand the path to patentability and potentially expedite the examination process.
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