How does rejoinder affect process claims in patent applications?
Rejoinder can have significant implications for process claims in patent applications, especially when product claims are found allowable. According to MPEP 821.04(b):
“Where claims directed to a product and to a process of making and/or using the product are presented in the same application, applicant may be called upon under 35 U.S.C. 121 to elect claims to either the product or a process. […] However, if applicant elects a claim(s) directed to a product which is subsequently found allowable, withdrawn process claims which depend from or otherwise require all the limitations of an allowable product claim will be considered for rejoinder.”
Key points about rejoinder of process claims:
- All process claims must depend from or require all limitations of an allowable product claim to be eligible for rejoinder
- Upon rejoinder, the restriction requirement between the elected product and rejoined process(es) will be withdrawn
- Process claims that meet the requirements of 35 U.S.C. 101, 102, 103, and 112 may be entered
It’s important for applicants to present process claims, preferably as dependent claims, early in prosecution to expedite the rejoinder procedure.
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