Derivation Proceedings
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Supplement: Changes to Implement Derivation Proceedings
Glossary Definition: Derivation proceedings were created to ensure that the first person to file an application is actually a true inventor. It will ensure that a person will not be able to obtain a patent for an invention that he did not actually invent. If a dispute arises as to which of the two applicants is a true inventor, it will be resolved through a derivation proceeding conducted by the Board.
A derivation proceeding is a new trial proceeding 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.
An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.
The procedure for derivation will take effect on March 16, 2013.
Summary:
The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board).
The changes in this final rule take effect on March 16, 2013.
Outline:
This supplement sets forth in detail the procedures by which the Board will conduct new administrative proceedings called derivation proceedings.
- Derivation proceedings were created to ensure that the first person to file the application is actually a true inventor.
- This new proceeding will ensure that a person will not be able to obtain a patent for an invention that he did not actually invent.
If a dispute arises as to which of two applicants is a true inventor (as opposed to who invented it first), it will be resolved through a derivation proceeding conducted by the Board.
This final rule sets forth:
(1) The requirements for a petition to institute a derivation proceeding;
(2) the standards for showing of sufficient grounds to institute a derivation proceeding;
(3) the standards for instituting a derivation proceeding;
(4) the standards and procedures for conducting a derivation proceeding; and
(5) the procedures for arbitration and settlement
The final rule clarifies that the phrase ‘‘same or substantially the same invention’’ means patentably indistinct.
- The final rule also clarifies that the phrase ‘‘the first publication’’ means either a patent or an application publication under 35 U.S.C. 122(b), including a publication of an international application designating the United States as provided by 35 U.S.C. 374.
The final rule clarifies that a petition for a derivation proceeding must be filed within the one-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the allegedly derived invention:
- The petition must show that the petitioner has at least one claim that is the same or substantially the same as the invention disclosed to the respondent
- The petition must demonstrate that the inventor from whom the claimed invention was allegedly derived did not authorize the filing of the earlier application claiming the derived invention
- The petition must show why the respondent’s claimed invention is the same or substantially the same as the invention disclosed to the respondent
The final rule clarifies that:
(1) Upon agreement of the parties, service may be made electronically;
(2) personal service is not required; and
(3) service may be by EXPRESS MAIL or by means at least as fast and reliable as EXPRESS MAIL
Section 3(i) of the AIA amends 35 U.S.C. 135 to provide for derivation proceedings and to eliminate the interference practice as to applications and patents having an effective filing date on or after March 16, 2013 (with a few exceptions).
Derivation proceedings will be conducted in a manner similar to inter partes reviews and post-grant reviews.
- Unlike patent interferences, derivations will be conducted in a single phase without the use of a ‘‘count.’’
- An inventor, however, may copy an alleged deriver’s application, make any necessary changes to reflect accurately what the inventor invented, and provoke a derivation proceeding by filing a petition and fee timely.
- U.S.C. 135(a):
An applicant for patent may file a petition to institute a derivation proceeding in the Office.
- The petition must state with particularity the basis for finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, filed the earlier application.
- The petition must be filed within one year of the first publication by the earlier applicant of a claim to the same or substantially the same invention, made under oath, and be supported by substantial evidence.
- 35 U.S.C. 135(b):
Once a derivation proceeding is instituted, the Board will determine whether a named inventor in the earlier application derived the claimed invention from a named inventor in the petitioner’s application and, without authorization, filed the earlier application.
- 35 U.S.C. 135(c):
The Board may defer action on a petition for derivation proceeding for up to three months after a patent is issued from the earlier application that includes a claim that is the subject of the petition.
- 35 U.S.C. 135(d):
A decision that is adverse to claims in an application constitutes the final refusal of the claims by the Office, while a decision adverse to claims in a patent constitutes cancellation of the claims, if no appeal or other review of the decision has been taken or had.
- 35 U.S.C. 135(e):
The parties to a derivation proceeding may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute.
- 35 U.S.C. 135(f):
Allows the parties to a derivation proceeding to determine the contest, or any aspect thereof, by arbitration within a time specified by the Director, and provides that the arbitration is governed by the provisions of title 9, to the extent that title is not inconsistent with 35 U.S.C. 135.
Derivation Proceedings Further Details:
A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding.
- The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner.
- The petition must be made under oath and supported by substantial evidence.
- The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.
In a petition for a derivation proceeding, the petitioner must:
- (i) identify which application or patent is disputed; and
- (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.
A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition.
- The Board of Patent Appeals and Interferences (soon to be renamed the Patent Trial and Appeal Board) will decide petitions for derivation and conduct any ensuing derivation proceeding.
Where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization.
A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.
