What is Form Paragraph 8.21.04 and when is it used in restriction requirements?
Form Paragraph 8.21.04 is a standard text used by patent examiners to notify applicants about the possibility of rejoinder in restriction requirements between process and apparatus claims. According to MPEP § 806.05(e):
“All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.”
This form paragraph is important because it informs applicants that:
- If the apparatus claims are found allowable, related process claims may be eligible for rejoinder
- Process claims must include all limitations of the allowable apparatus claims to be considered for rejoinder
- Applicants should consider amending process claims during prosecution to ensure they meet rejoinder requirements
The use of this form paragraph helps ensure that applicants are aware of the potential for rejoinder and can make informed decisions about claim amendments during patent prosecution.
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