How can applicants retain the right to rejoinder?
Applicants can take specific actions to retain the right to rejoinder in patent applications. According to MPEP 821.04:
“In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.”
Key strategies for retaining the right to rejoinder:
- Amend nonelected claims to depend from or require all limitations of the elected invention
- Present process claims, preferably as dependent claims, early in prosecution
- Ensure that nonelected claims meet all criteria for patentability
- Respond promptly to Office actions and maintain pendency of nonelected claims
By following these strategies, applicants can increase the likelihood of rejoinder if the elected invention is found allowable.
To learn more: