Derivation Proceedings

Effective March 16, 2013, the AIA changed the U.S. patent system from a “first-to-invent” system to a “first-to-file” system, eliminating the need for patent interferences to resolve disputes between patent applicants concerning which applicant was the first to invent.

Patent interferences are still being administered by the PTAB, for disputed subject matter in patent applications that have an effective filing date before March 16, 2013. And the firm remains involved in the half dozen such proceedings that currently exists. These proceedings will be phased out over time, but may still be declared and administered by the PTAB as long as competing patent applications were filed before March 16, 2013.

For first-to-file applications, filed on or after March 16, 2013, the AIA provides for derivation proceedings for the PTAB to resolve disputes over whether a patent applicant did not invent the subject matter of an application, and instead “derived” that subject matter from the true inventor. Any patent applicant may petition to institute a derivation proceeding. If the petition is successful, the PTAB may correct the named inventor in a patent application or issued patent. Requirements for the petition, which must be filed within one year of the first publication of an invention that is the same or substantially the same as the earlier application’s claim to the invention, include substantial evidence that

  • an inventor named in a different, earlier-filed application, derived the claimed invention from the petitioner; and
  • the earlier application claiming the derived invention was filed without authorization.
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