What is a derivation proceeding?

A derivation proceeding provides a safeguard to help ensure that the first person to file a patent application is actually a true inventor. The America Invents Act (“AIA”) changes the U.S. patent system from a first-to-invent system to a first-inventor-to-file system, typically awarding a patent to the first inventor to file a patent application. Recognizing that a patent should not be awarded to a person who was first to file a patent application but who had derived the invention from another person, the AIA amends 35 U.S.C. §135 to provide derivation proceedings to decide who is the first true inventor to file a patent application.

Which patents/applications are eligible?

Only a patent or application containing one or more claims having an effective filing date on or after March 16, 2013, will be eligible for a derivation proceeding.

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