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Question:
Can the Board defer action on a petition for a derivation proceeding?
Answer:
The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
Chapter Details:
The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
Section Summary:
This question and answer comes from 35 U.S.C. 135(c). The following is a brief summary of 35 U.S.C. 135(c).
35 U.S.C. 135(c): Deferral of decision
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.