How does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. A joint research agreement can have significant effects on patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides an example: “ Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement. “ In such cases, a provisional 35 U.S.C. 103(a) rejection based on provisional prior art under pre-AIA 35 U.S.C. 102(e) cannot be made if evidence of the joint research agreement is filed. However, a provisional double patenting rejection may still be made. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Pre-AIA 35 U.S.C. 103(c) Cannot Overcome Double Patenting MPEP 2146 Prohibited Pre-AIA 35 U.S.C. 103(c) Applies Only to Specific Prior Art MPEP 2146 Burden of Establishing Prior Art Disqualification MPEP 2146 Pre-AIA Prior Art Under 103(c) Must Be Commonly Owned MPEP 2146 Double Patenting Rejection Due to CREATE Act Amendment MPEP 2146.03 Permitted Disclosure of Joint Research Agreement Parties Required MPEP 2146 Prior Art Not Disqualified Under 103(c) MPEP 2146 Common Ownership Exclusion for Prior Art MPEP 2146 Prior Art Exclusion for Commonly Owned Inventions MPEP 2146 Reissue Patents Subject to Pre-AIA 35 U.S.C. 103(c) Changes MPEP 2146 Other Related FAQs 5 FAQs Collapse How does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)? What is the impact of the CREATE Act on double patenting rejections? How can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA...