How does rejoinder affect the scope of patent protection?
Rejoinder can significantly affect the scope of patent protection by allowing previously withdrawn claims to be included in the granted patent. Here’s how:
- It expands the protection to include additional embodiments or applications of the invention.
- Rejoined process claims can provide protection for methods of making or using the allowable product.
- It allows for a broader range of infringement assertions against potential competitors.
The MPEP 821.04 states: “In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.” This guidance emphasizes the importance of maintaining proper claim dependencies to ensure the broadest possible protection.
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