What is the potential for rejoinder of process claims in patent applications?
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.
The potential for rejoinder of process claims is an important consideration in patent applications where there has been a restriction between product and process claims. According to MPEP 806.05(f), examiners are instructed to use form paragraph 8.21.04 to notify applicants of this possibility:
“Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder.”
Key points about rejoinder:
- Process claims must include all limitations of the allowable product/apparatus claims to be eligible for rejoinder.
- Rejoined claims will be fully examined for patentability.
- To be allowable, rejoined claims must meet all criteria for patentability, including requirements under 35 U.S.C. 101, 102, 103, and 112.
- Applicants are advised to amend process claims during prosecution to require the limitations of the product/apparatus claims to facilitate rejoinder.
This practice allows for the efficient examination of related claims that were initially restricted.