How does rejoinder apply to different types of inventions?
Rejoinder can apply to various types of inventions, but its application depends on the relationship between the elected and non-elected claims. The MPEP 821.04 provides specific guidance:
“Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112.”
Different scenarios for rejoinder include:
- Product and Process of Making: If the product claims are allowable, related process claims may be eligible for rejoinder.
- Product and Process of Using: Allowable product claims may lead to rejoinder of process of use claims.
- Apparatus and Method of Using: Allowable apparatus claims might allow for rejoinder of method claims.
- Subcombination and Combination: In some cases, allowable subcombination claims might lead to rejoinder of combination claims.
It’s important to note that regardless of the type of invention, rejoined claims must meet all patentability criteria to be allowed.
To learn more: