[author: Courtenay C. Brinckerhoff]

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such proceedings under only very limited circumstances.

The Statutory Requirements for Derivation Proceedings

The AIA provides for two types of derivation proceedings: application-patent derivation proceedings to be conducted by the USPTO under a revised version of 35 USC § 135, and patent-patent derivation proceedings to be conducted by a district court under a revised version of 35 USC § 291.

USPTO Derivation Proceedings

Some of the key provisions of revised 35 USC § 135 include:

  • only “[a]n applicant for patent” can file a petition to institute a derivation proceeding
  • a petition must be filed within one year “of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention”
    • according to the USPTO, the “first publication” may be as a U.S. application or a PCT applications
  • the petition must “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”
  • the petition must be “supported by substantial evidence”
    • the USPTO advises applicants to “set forth their entire case and supporting evidence in their petitions”

Institution of USPTO Derivation Proceedings

Even if an applicant can satisfy all of these requirements, the USPTO may or may not institute a derivation proceeding. The statute provides:

Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.

If the USPTO decides not to institute a derivation proceeding, the applicant may have no recourse. This is because the statute also provides:

The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.

The statute sets forth two time periods during which the USPTO may “defer action on a petition:”

  • “until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition” (e.g., until three months after the earlier application is granted)
  • until the termination of an ex parte reexamination, inter partes review or post grant review “involving the patent of the earlier applicant”

Further, the USPTO commentary in the Federal Register Notice setting forth the final derivation rules state

[A] derivation is unlikely to be instituted if the petitioner’s claim is not otherwise in condition for allowance.

This means that an applicant may not be able to use a derivation proceeding to step into the shoes of the earlier application in order to avoid intervening prior art, because any intervening prior art would prevent the petitioner’s application from being allowable.

District Court Derivation Proceedings

The language of revised 35 USC § 291 may make it even more difficult to bring a derivation proceedings in a district court:

(a) IN GENERAL.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.

(b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.

Two requirements in particular may be difficult to satisfy:

First, in order to bring a derivation proceeding in a district court, the plaintiff must have a granted patent that claims the same invention as another patent with an earlier effective filing date. This will occur only when the USPTO failed to cite the earlier patent against the plaintiff’s application during examination of the plaintiff’s application.

Second, in order to bring a derivation proceeding in a district court, the plaintiff’s patent must be granted within one year of the earlier patent, and the plaintiff will have to file his complaint within that same one year period. If the would-be plaintiff’s patent is granted more than one year after the earlier patent, the statute does not appear to offer any recourse.

Substantive Restrictions?

While this article highlights some of the procedural obstacles to bringing a derivation proceedings, others have suggested that the substantive scope of the statute also is very narrow. In particular, as discussed by Professor Dennis Crouch in this Patently-O article, Professor Sarnoff and Chico Gholz “have a soon-to-be-published article in IP Today” explaining that derivation proceedings are limited to situations where the earlier patent/application claims “the same invention” as the later application, and do not reach situations where the claimed inventions are merely “substantially the same” or “patently indistinct.” As the USPTO’s final rules do not interpret the statute this narrowly, this issue is one that the Federal Circuit will have to decide.

Availability of Derivation Proceedings

Derivation proceedings are available only for applications that only claim (and only ever claimed) subject matter with an effective filing date of March 16, 2013 or later, and that only claim (and only ever claimed) priority to such applications. This is because the presence of a claim with an effective filing date prior to March 16, 2013 (or a priority claim to an application with such a claim) makes an application subject to the current “interference” versions of 35 USC §§ 102(g), 135 and 291. For these and other reasons it could be quite some time before we see a derivation test case that explores the scope of derivation proceedings.

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