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

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 (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.”