Can product-by-process claims be rejoined with allowed product claims?

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.

Yes, product-by-process claims can be rejoined with allowed product claims under certain circumstances. MPEP 821.04(a) provides guidance on this topic:

“When a product-by-process claim is presented in the same application as a product claim that is not a product-by-process claim, and the product-by-process claim is not elected for examination, the examiner should consider rejoinder of the product-by-process claim when the product claim is found allowable.”

This means that if a non-elected product-by-process claim is present in an application where a product claim (not in product-by-process format) is found allowable, the examiner should consider rejoining the product-by-process claim. However, it’s important to note that:

• The product-by-process claim must be commensurate in scope with the allowed product claim.
• The product-by-process claim should not introduce new issues that would require further consideration or search.
• The product-by-process claim must meet all other requirements for patentability.

If these conditions are met, the product-by-process claim can be rejoined and examined for patentability along with the allowed product claim.