What are the requirements for rejoinder of process claims in a patent application?

The requirements for rejoinder of process claims in a patent application are as follows:

1. The product claims must be found allowable.
2. The process claims must depend from or otherwise require all the limitations of the allowable product claim.
3. The process claims must be commensurate in scope with the allowable product claims.

According to MPEP 821.04: “Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder.” The MPEP further states: “Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder.”

To learn more:

• Rejoinder
• Process Claims
• Patent Application
• Claim Requirements