Derivations came on the patent scene via the Leahy-Smith America Invents Act (AIA) that was passed by Congress and signed into Law by President Obama on September 16, 2011.1 The derivations portion of the AIA applies to patents and applications with an effective filing date on or after 03/16/2013. For applications with a filing date prior to 03/16/2013, an interference proceeding is still used.
In line with the first-to-file basis of the AIA, a derivation proceeding is used to figure out if a patent applicant “derived” the claimed idea in a patent application from the original inventor, in contrast to an interference proceeding, which is used to decide who created the invention first. A derivation proceeding is a trial proceeding before the Patent Trial and Appeal Board (PTAB) that is meant to ensure the first person to file a patent application is actually the true inventor.
Let’s be honest, we all want to know about the test! To succeed in a derivation proceeding, the petitioner must pass a two part test:
- Prior conception of the invention by another, and
- Communication of that conception to the patentee that is sufficient to enable him to construct and successfully operate the invention.2
Anytime you are getting ready to study for the big exam you think, “Where do I begin?” Remember, the inventor who seeks a derivation proceeding must file an application. An inventor may copy an alleged deriver’s application by making the necessary changes to reflect accurately what the inventor invented in order to provoke the derivation proceeding.
Then you will need to file a petition! To institute a derivation proceeding in the USPTO, an applicant for a patent must file a petition with respect to an invention claimed in an earlier-filed patent. The petition will need to be specific as to how the “inventor” in the earlier application derived the invention from the petitioner, and how they did so without the petitioner’s permission.
What do you need to file a petition?
- Money. The fee is $400 to file a derivation proceeding.
- The petition must identify which application or patent is being disputed.
- The petition must show that at least one claim is the same/substantially the same as the application/patent disputed.
- The petition must include at least one affidavit addressing the communication of the derived invention, and the lack of authorization for filing the earlier filed application.
- The petitioner must also identify the relief requested.3
The USPTO Director determines whether the petition demonstrates that the standards for instituting a derivation proceeding are met. The Director may institute a derivation proceeding, but is not required to institute, even if the petitioner meets all of the standards to institute a derivation proceeding.4
How long do you have to file for a derivation proceeding? One year from the time in which the derived patent application was first published or initially granted, whichever is sooner! This requirement will keep many inventors and patent firms on their toes, but what do you do if you are too late?
If you believe that a patent applicant has misappropriated your invention, but you’ve missed the timeframe in which to file a petition, you could still file a patent application for the invention and possibly use the prior commercial use defense for § 102 or § 103 rejections based on the previously filed patent application. Another possibility is defending against attempted enforcement in court of a granted patent from the previously filed patent application by proving inequitable conduct by the patentee.4
Decisions, Decisions. A decision by the PTAB can be deferred for up to three months. Why? The Board does not want act on un-patentable claims! This gives the respondent time to address patentability issues and time to amend claims to be outside the scope of the petition.
The final decision is the final refusal by the USPTO on those claims. If there is not a request for review or appeal, then, if the petitioner wins, the claims are cancelled and/or inventorship of the original application is corrected. If the respondent wins, the application continues in process or the patent stands. If the petition is rejected, the petitioner may file a request for reconsideration.
The final question: is a “final decision” ever a “final decision?” No. A party has two options if they are dissatisfied with the decision in a derivation proceeding.
- A de novo civil action in the US District Court for the Eastern District of Virginia, or
- An appeal directly to the US Court of Appeals for the Federal Circuit.4
Other Options: Other options before a final decision from the PTAB in a derivation proceeding include settlement or arbitration. Settlement: A settlement is a way to terminate a derivation proceeding. A written statement must be filed reflecting the agreement between the parties and, unless the PTAB finds the agreement to be inconsistent with the evidence of record, it shall take action consistent with the agreement.4 The bonus of a settlement agreement is that the information will be kept confidential and separate from the file of the involved patents. The information can be made available only to government agencies on written request, or to anyone showing good cause.5 Arbitration: Notice of arbitration must be given to the Director and until notice is given to the Director, the arbitration award is unenforceable.4
What don’t we know? To date there have only been seven derivation proceedings filed. Three are pending and four were not instituted. The ultimate conclusion on derivation proceedings is that they are the Wild West of the USPTO. It will be very interesting to see how derivation proceedings play out over the next few years and we will be on watch!
- Public Law 112-29- Sept. 16, 2011
- Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F. 22d 905, 908 (CCPA 1974).
- Federal Register, Vol. 77, No. 176, September 11, 2012.
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