Derivation Proceedings Gene Quinn Patent Attorney IPWatchdog.com March 27 th, 2012

AIA – Derivation Proceedings The Basics: “Derivation proceedings were created to ensure that the first person to file the application is actually a true inventor. This new proceeding will ensure that a person will not be able to obtain a patent for the invention that he did not actually invent.” - 77 Fed. Reg (10 February 2012)

America Invents Act § 135. Derivation proceedings (a) INSTITUTION OF PROCEEDING. – An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. [ … ]

America Invents Act § 135. Derivation proceedings (b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.— In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. [ … ]

America Invents Act § 6. Patent Trial and Appeal Board (c) 3-MEMBER PANELS.—Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.

America Invents Act Proceeding Basics: USPTO Proposal: “Derivation proceedings will be conducted in a manner similar to inter partes reviews and post-grant reviews. Unlike patent interferences, derivations will be conducted in a single phase without the use of a ‘count.’” - 77 Fed. Reg (10 February 2012)

America Invents Act Proceeding Basics: “Proposed § (c) would provide that a derivation showing is not sufficient unless it is supported by substantial evidence and at least one affidavit addressing communication and lack of authorization, consistent with 35 U.S.C. 135(a), as amended. The showing of communication must be corroborated. ” - 77 Fed. Reg (10 February 2012)

America Invents Act § 141. Appeal to Court of Appeals (d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding … may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dismissed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with section 142, files notice with the Director that the party elects to have all further proceedings conducted as provided in section 146.

America Invents Act § 273. Defense to infringement based on prior commercial use (e)(2) DERIVATION.—A person may not assert a defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.

America Invents Act § 102(b) EXCEPTIONS – (1) disclosures made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under § 102(a)(1) if – (A) disclosure was made by a (joint) inventor or by another who (in)directly obtained from the (joint) inventor the subject matter disclosed (a “deriver”); or (B) subject matter disclosed was publicly disclosed by the (joint) inventor or a “deriver” before such disclosure