Section 3 of the America Invents Act creates a new proceeding aimed at ensuring the person obtaining a patent is a true inventor and did not derive the invention from another. If there is a dispute between two applicants as to who the true inventor is, a derivation proceeding can be instituted before the Patent Trial and Appeal Board. The derivation proceeding will replace the interference proceeding.
A derivation proceeding may only be requested by an inventor who has filed a patent application claiming the same or substantially the same invention as another applicant. This can be done by copying the earlier filed application, making necessary changes to the application to reflect the true invention, and filing the application along with a petition for a derivation proceeding. The petition must state with particularity the basis for finding that the named inventor in the earlier application derived the claimed invention from the inventor in the petitioner’s application and filed it without the inventor’s authorization. The petition for a derivation proceeding must be filed within one year of the first publication of the invention by the earlier applicant.
A derivation proceeding will be instituted by the Director if the petition sufficiently shows: 1) the petitioner’s invention is the same or substantially the same and is not patentably distinct from the earlier applicant’s invention; 2) the invention was derived from the inventor on the petitioner’s application; 3) the earlier application was filed without the inventor’s authorization; and 4) the construction of the petitioner’s claims accurately reflects the true invention. The decision by the Director whether to institute a derivation proceeding is final and nonappealable.
The parties to a derivation proceeding may terminate the proceeding by filing a joint written statement reflecting the settlement agreement. The proceeding will be terminated as long as the Patent Trial and Appeal Board does not find the settlement inconsistent with the evidence of record. If the Board does find the settlement inconsistent with the evidence, it may disregard it and continue the derivation proceeding.
Upcoming Events/Key Dates
The derivation proceeding becomes effective on March 16, 2013, and applies to all patents and patent applications subject to the first-inventor-to-file system. The USPTO released its final rules regarding the derivation proceeding on September 11, 2012.