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Why No One is Talking About Derivation Proceedings at PTAB

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings. This change took effect on March 16, 2013. But despite over three and a half years since this change, little is known about this procedure as few have been filed.

Derivation Proceedings Overview

Derivation proceedings, much like its Interference predecessor, is a trial-like proceeding conducted at the Patent Trial and Appeal Board (PTAB) 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. In other words, Derivation proceedings apply where there are allegations that an individual, having learned of an invention from another, files a patent application claiming the invention as his own.

To initiate a derivation proceeding, a petitioner must file (1) their own patent application and (2) a petition within one year of the first publication of the other party’s claim to an invention that is the same or substantially the same as the petitioner’s. The PTAB will institute proceedings if they determine the petition provides substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

The parties then conduct a trial-like proceeding, similar to an inter partes review, before a three-judge panel where the petitioner must show that the earlier-filing inventor derived their invention from the petitioner.

PTAB Has Yet To Resolve an Instituted Derivation Proceeding

Little precedent exists regarding the conduct of a derivation proceeding because the PTAB has deferred action on each instituted petition. Since March 16, 2013, only seven proceedings have been made publically available. Of the seven public proceedings, only three have been instituted. In the three instituted proceedings, which are pending, the PTAB is waiting to take action until either party’s application is in condition for allowance but for this issue. (See DER2013-00001 paper-6; DER2015-00003 paper 3; and DER2015-00009 paper 5). As a result, little precedent exists regarding the conduct of a derivation proceeding.

Conclusion

Derivation proceedings provide a tool for contesting inventorship at the USPTO. However, due to the recent creation of the proceeding, and its nature, the PTAB has yet to resolve a single instituted proceeding.

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About this Author

Howard Wisnia, Mintz Levin, IP trial lawyer
Member

Howard is an IP trial lawyer who has successfully led litigation teams in a variety of patent infringement and other IP matters throughout the country. He has litigated matters on behalf of clients in the medical device, financial, telecommunications, semiconductor, and software industries.

Howard has successfully served as both first chair and co-counsel in patent litigation trials and has successfully argued numerous Markman hearings and summary judgment motions. He has also appeared before the International Trade Commission and...

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Kevin Amendt, Technology Specialist, Mintz Levin Law Firm
Technology Specialist

As a Technology Specialist and registered Patent Agent, Kevin's focus is on IP law, including patent procurement and IP litigation.

Kevin’s practice includes all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patentability, infringement, and invalidity analysis. He also assists on due-diligence projects and reexaminations.

Kevin is involved in patent litigation, including infringement and invalidity issues, and other intellectual property disputes. Kevin plays an active role in analyzing prior art, infringement material, and discovered documents to formulate and support litigation positions.

617.348.4863