What are the examiner’s responsibilities regarding rejoinder?

Examiners have several responsibilities when it comes to rejoinder in patent examination. According to MPEP 821.04:

1. Reconsider the propriety of a restriction requirement when all claims to the elected invention are in condition for allowance
2. Consider nonelected invention(s) for rejoinder
3. Withdraw the restriction requirement between an allowable elected invention and a nonelected invention that depends from or requires all limitations of an allowable claim
4. Fully examine rejoined claims for patentability
5. Use appropriate form paragraphs (e.g., 8.45, 8.46, 8.47) to notify applicants about rejoinder

The MPEP also states: “When all claims directed to the elected invention are in condition for allowance, all claims directed to a nonelected process invention must depend from or otherwise require all the limitations of an allowable product claim for that process invention to be rejoined.”

Examiners must ensure that rejoined claims meet all criteria for patentability, including the requirements of 35 U.S.C. 101, 102, 103, and 112.

To learn more:

• rejoinder
• examiner responsibilities
• patent examination
• restriction requirement