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