Patent Derivation Proceedings FAQ

Derivation proceedings are administrative patent officeproceedings conducted at the Patent Office to determine who should be able to pursue a patent application. The patent reform that was enacted over several years and concluded on March 16, 2013, instituted derivations proceedings, which are most similar – though certainly not identical – to the old inteference proceedings which attempted to ferret which inventor had invented an idea first. Derivation proceedings can be brought by an inventor who believes that an earlier-filed application may have been derived from his own inventive activity. Here are a few basic questions and answers about the proceedings:

Q: What are the requirements for seeking a derivation proceeding?

A: A patent applicant must file a petition to being the proceeding. The petition must establish the basis for finding that an inventor named in an earlier application actually 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 one 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.

Q: What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

A: In a petition for a derivation proceeding, the petitioner must both: (1) identify which application or patent is disputed; and (2) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Q: What is the standard for instituting a derivation proceeding, and who decides whether that standard is met?

A: 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 Patent Trial and Appeal Board decides petitions for derivation and conducts any proceeding arising therefrom.

Q: How will the Board conclude a derivation proceeding?

A: The AIA provides that 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.

Q: Are there possibilities for appeal from an unfavorable decision by the Board?

A: Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Q: In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

A: Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

Q: What about settlement?

A: Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.