Transcript First to Invent (FI) vs. First to File (FF)

Derivation Proceedings
Gene Quinn
Patent Attorney
IPWatchdog.com
March 27th, 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. 7029 (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. 7029 (10 February 2012)
America Invents Act
Proceeding Basics:
“Proposed § 42.405(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. 7031 (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