What is the effect of a Joint Research Agreement on patent rejections?

A Joint Research Agreement (JRA) can affect patent rejections in the following ways:

• It can except certain subject matter as prior art under 35 U.S.C. 102(b)(2)(C) and 102(c) for applications subject to AIA.
• It can disqualify certain references as prior art under pre-AIA 35 U.S.C. 103(c).
• When a rejection is overcome due to a JRA, the examiner may need to make a new double patenting rejection in the next Office action.

As stated in MPEP 706.07(a): “When a reference’s subject matter is excepted as prior art under the joint research agreement (JRA) provision of 35 U.S.C. 102(b)(2)(C) and 102(c) or a reference is disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C. 103(c) and a pending rejection is thereby overcome, the examiner may need to make a new double patenting rejection based upon the excepted subject matter or disqualified reference in the next Office action.”

To learn more:

• Joint Research Agreement
• Prior Art
• Double Patenting
• AIA
• Pre-AIA