PHOSITA

Authored by Genni Ellis, April 20, 2018 at 10:05 am
USPTO

I was recently contacted by Law360 to comment on the first-ever instituted derivation proceeding at the USPTO Patent Trial and Appeal Board (Andersen Corp. v. GED Integrated Solutions Inc., case number DER2017-00007). It took five years for the PTAB to institute the first one—the review of a window patent challenged by Andersen Corp. The case illustrates what it takes to successfully petition for a derivation; however, the facts of the case were perfectly teed up for the statute. So we remain unclear on the true breadth of circumstances which could lead to an instituted derivation proceeding. Here is a link to the Law360 article. For more information about derivation proceedings, see my earlier post here.