What is the process of rejoinder in patent applications?
Rejoinder is a process in patent examination where previously withdrawn process claims may be reconsidered for examination if they include all the limitations of an allowable product claim. The MPEP 806.05(h) provides guidance on this process through Form Paragraph 8.21.04, which states:
“Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder.”
Key points about rejoinder:
- It applies to withdrawn process claims when product/apparatus claims are found allowable.
- The process claims must include all limitations of the allowable product/apparatus claims.
- Rejoined claims will be fully examined for patentability.
- Applicants are advised to amend process claims during prosecution to require the limitations of the product/apparatus claims.
Rejoinder allows for the consideration of related claims that might otherwise remain unexamined due to a restriction requirement.
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