2313 Action Once a Derivation Proceeding is Instituted
MPEP SECTION SUMMARY
The Board acquires jurisdiction over any involved file when the Board initiates a derivation proceeding. Other proceedings for the involved file within the Office are suspended except as the Board may order. Once a patent or application becomes involved in derivation proceeding, the Board has jurisdiction over the file. The examiner may not act on an involved patent or application except as the Board may authorize. The Board retains jurisdiction over the derivation proceeding until it is terminated.
2314 Action at the Board
MPEP SECTION SUMMARY
Action at the Board during a derivation proceeding is beyond the scope of this Chapter. Check out the section on Derivation Proceedings.
2315 Action After a Derivation Proceeding is Decided
MPEP SECTION SUMMARY
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
If there are claims that are not finally disposed of in the judgment, the examiner should update the search and may reopen prosecution for any claim not disposed of in the judgment, where appropriate.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
