When are product and process claims eligible for rejoinder?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Product and process claims are eligible for rejoinder under specific conditions as outlined in MPEP 821.04:

• When a product claim is found allowable.
• The process claim includes all the limitations of the allowable product claim.
• The process claim is not patentably distinct from the product claim.

The MPEP 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. […] However, if applicant elects claims directed to the product, and a product claim is subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder.”