What is the “between the products” requirement for rejoinder?

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.

What is the “between the products” requirement for rejoinder?

The “between the products” requirement for rejoinder refers to the condition where all product claims are found allowable, and the process claims must be commensurate in scope with the allowed product claims. This is explicitly stated in MPEP 821.04(a):

“Where all product claims are found allowable, applicant must be advised that the process claims may be rejoined only if the process claims are commensurate in scope with the allowed product claims.”

This means that for process claims to be eligible for rejoinder, they must not be broader in scope than the allowed product claims. The examiner must ensure that the process claims include all the limitations of the allowable product claims to maintain the “between the products” relationship required for rejoinder.