A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.
Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA). An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding with the Board.
2311 Consult a Technology Center Practice Specialist
MPEP SECTION SUMMARY
Where an appropriate petition for derivation has been received by the Board, the Board will enter a notice into the respondent’s application or patent file, if it has issued. When the examiner has determined that either the petitioner’s or the respondent’s application (where applicable) has allowable subject matter with respect to any claim, the examiner should refrain from taking any further action until consulting with the Technology Center Practice Specialist (TCPS).
The claims in petitioner’s application that are patentably indistinct from respondent’s application or patent should be subject to a rejection under 35 U.S.C. 102(a)(2) which should be maintained until jurisdiction is transferred to the Board to conduct the derivation proceeding.
2312 Board May Assume Jurisdiction
MPEP SECTION SUMMARY
The Board may assume jurisdiction of any application, including those involved in reexamination proceeding(s) or reissue application(s), or any issued patent in which a petition for derivation has been filed.
In an application this jurisdictional assumption may occur at any time, including before the application is otherwise in condition for allowance.
Where the Board has assumed jurisdiction of an application or proceeding involving an issued patent no action by the examiner may be taken until jurisdiction has been returned by the Board to the examiner.
