New \u00a7135(a) requires that the Derivation Proceeding be initiated within one year \u201cof the first publication of a claim to an invention that is the same or substantially the same as the earlier application\u2019s claim to the invention.\u201d\u00a0 This is echoed in proposed 37 CFR \u00a742.403, and is similar to the language in old \u00a7135(b)(2) pertaining to interferences, but it leaves some inexplicable gaps.\u00a0 For example what happens if the one year from publication passes before offending claims are presented in the earlier application?<\/p>\n
<\/p>\n
Initiating<\/h1>\n
A Derivation Proceeding can only be initiated by a patent applicant (proposed 37 CFR \u00a742.402) which includes a reissue applicant (proposed 37 CFR \u00a742.401).\u00a0 The petition must:<\/p>\n
- \n
- Show that the petitioner has a pending application, and the petition is being timely filed.\u00a0 Proposed 37 CFR \u00a742.405(a)(1).\u00a0\u00a0\u00a0<\/li>\n
- Show that the petition\u2019s application contains at least one claim that is substantially the same as the respondent\u2019s claimed invention (proposed 37 CFR \u00a742.405(a)(2)(i)) that is not patentably distinct from the invention disclosed to the respondent (proposed 37 CFR \u00a742.405(a)(2)(ii).<\/li>\n
- Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding.\u00a0 Proposed 37 CFR \u00a742.405(b)(1).\u00a0\u00a0\u00a0<\/li>\n
- Demonstrate that an invention was derived from an inventor named in the petitioner’s application and that the earlier application was filed without authorization.\u00a0 Proposed 37 CFR \u00a742.405(b)(2).\u00a0\u00a0\u00a0<\/li>\n
- Show why the respondent\u2019s claimed invention is not patentably distinct from the invention disclosed to the respondent.\u00a0 Proposed 37 CFR \u00a742.405(b)(3)(i).<\/li>\n
- Identify how the claim is to be construed. Proposed 37 CFR \u00a742.405(b)(3)(ii).<\/li>\n<\/ul>\n
Overall, the petition must be supported by substantial evidence, which at a minimum would include an Affidavit addressing communication of the derived invention to the respondent, and respondent\u2019s lack of authorization to file.\u00a0 Proposed 37 CFR \u00a742.405(c).\u00a0 The showing must be corroborated.\u00a0 Proposed 37 CFR \u00a742.405(c).\u00a0<\/p>\n
The petition must be accompanied by the derivation fee, currently expected to be $400 (proposed 37 CFR \u00a742.404) and must be served upon the respondent (proposed 37 CFR \u00a742.406).\u00a0 Proposed 37 CFR \u00a742.407(a).\u00a0<\/p>\n
If the petition is defective, the petitioner must correct the defects\u00a0 by the earlier of one month from notice of the incomplete request, or the expiration of the statutory deadline in which to file a petition for derivation.\u00a0 Proposed 37 CFR \u00a742.407(b).<\/p>\n
The determination by the Director whether to institute a derivation proceeding is final and nonappealable.\u00a0 New 35 U.S.C. \u00a7135(a).<\/p>\n
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<\/a><\/p>\nDetermination<\/strong><\/p>\n
The Derivation Proceeding is decided by the Patent Trial and Appeal Board (PTAB) (new 35 U.S.C. \u00a7135(a); proposed 37 CFR \u00a742.408), unless the parties opt for arbitration (new 35 U.S.C. \u00a7135(f); 37 CFR \u00a742.410), which is dispositive as to the parties.\u00a0 The proceeding is a trial governed by the Subpart A regulations.\u00a0 37 CFR \u00a742.400(a).\u00a0 The final decision of the PTAB, if adverse to claims in a pending application constitutes a final refusal of those claims, and if adverse to claims in an issued patent, constitutes cancellation of those claims (unless appealed).\u00a0 New 35 U.S.C. \u00a7135(d).\u00a0 The PTAB also as the authority to correct the naming of the inventor in any application or patent at issue.\u00a0 New 35 U.S.C. \u00a7135(d).\u00a0 The PTAB decisions are generally public record.\u00a0 37 CFR \u00a742.412.<\/p>\n
The PTAB can defer action on a derivation proceeding until three months after a patent issues on the earlier application, or stay the derivation proceeding until the termination of a Reexamination, Inter Partes Review, or Post Grant Review. New 35 U.S.C. \u00a7135(d).\u00a0 The PTAB can also decline to institute a Derivation Proceeding if where the patents\/applications involved are commonly owned.\u00a0 37 CFR \u00a742.411.<\/p>\n
Settlement<\/h1>\n
The parties to a Derivation Proceeding can terminate it by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute, and the PTAB will act accordingly unless the agreement is inconsistent with the evidence of record.\u00a0 New 35 U.S.C. \u00a7135(e); proposed 37 CFR \u00a742.409.\u00a0 The settlement agreement must be filed with the Director, but upon request will be treated as business confidential information, and only made available only to Government agencies on written request, or to any person on a showing of good cause. New 35 U.S.C. \u00a7135(e).<\/p>\n
Recommendations<\/h1>\n
Inventors who thought that the AIA would dispense with the need for inventor notebooks are disappointed.\u00a0 The date of invention, and in particular whether it is prior to or subsequent to a third party disclosure, is the central issue in a Derivation proceeding, and the inventor will want proof of these events.\u00a0 Moreover, it is more important than ever to document what disclosures are made and to whom, in order to prove derivation.\u00a0 Not surprisingly under a first-to-file regime, getting the earliest filing date possible is the best plan, and getting a filing date before any outside disclosures eliminates the possibility of derivation.<\/p>\n
Derivation proceedings are more likely to result from attempted collaboration, than outright theft.\u00a0 After the inventor of A and the inventor of B have some preliminary talks, and the inventor of A begins to think about A + B, while the inventor of B begins to think about B + A, the difference between building on the prior art and derivation begins to blur.\u00a0 An agreement prior to the discussions could avoid at least some these difficulties.<\/p>\n
To avoid derivation proceedings, then, one should try to limit third party disclosures until after at least a provisional application has been filed, and address the ownership issues in the confidentiality agreement covering the disclosure.<\/p>\n","protected":false},"excerpt":{"rendered":"
Background The America Invents Act shifts the United States from a first-to-invent to a first-to-file patent system.\u00a0 This eliminates the need the determine the first inventor, and thus the AIA eliminates patent interferences, and instead provides a new procedure \u2013 … Continue reading