What are the conditions for rejoinder of process claims?
What are the conditions for rejoinder of process claims?
The conditions for rejoinder of process claims are specific and must be met for the claims to be eligible. MPEP 821.04(a) outlines these conditions:
- Allowability of product claims: All claims directed to the elected product must be in condition for allowance.
- Scope requirement: The process claims must be commensurate in scope with the allowed product claims. This means they must include all the limitations of the allowable product claims.
- Dependency or inclusion: The process claims should depend from or otherwise include all the limitations of the allowable product claims.
- Examination readiness: The process claims must be ready for examination and not raise new issues that would require further consideration or search.
MPEP 821.04(a) states: “Where product and process claims drawn to independent and distinct inventions 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 process. … Where the application as originally filed discloses the product and the process for making and/or using the product, and only claims directed to the product are presented for examination, when a product claim is found allowable, applicant may present claims directed to the process of making and/or using the patentable product by way of amendment pursuant to 37 CFR 1.121.”
If these conditions are met, the process claims will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104.
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