Derivation Proceedings

May 15, 2017

A petitioner can use derivation proceedings to challenge the inventorship of an invention claimed in a published pending application or an issued patent. Only applications and patents having at least one claim with an effective filing date after March 15, 2013, are eligible for derivation proceedings. Derivation proceedings generally follow other US Patent Trial and Appeal Board (PTAB) trial procedures, such as an Inter Partes Review or Post-Grant Review, and may include limited discovery regarding issues specific to derivation.

A petitioner can use derivation proceedings to demonstrate that the filer of the patent “derived” the invention from the petitioner. Derivation proceedings are not designed to determine the “first to invent.”

A petition requesting derivation proceedings must be filed within one year of publication of a pending application or one year of issuance of a patent, whichever is earlier, that claims the same or substantially the same invention as the invention in the petitioner’s application. The petition must state with particularity the basis for finding that (a) an individual named in the earlier-filed application derived the invention from an individual named in the petition, and (b) the earlier application claiming the invention was filed without authorization.

A petition for derivation will be deemed insufficient unless it is supported by substantial evidence that includes at least one affidavit detailing corroborated communications of the invention to the first filer and lack of authorization in filing the first application.

The PTAB may, in appropriate circumstances, correct the naming of an inventor in any application or patent at issue. In the alternative, the PTAB may refuse the claims of the earlier-filed application or cancel the claims of the involved patent. A decision adverse to the petitioner constitutes a final refusal of the petitioner’s pending claims at issue.

Similar to patent interferences, and where applicable, derivation proceedings offer challengers a less costly opportunity to contest ownership of patented subject matter where the only alternative may be litigation.