Executive Summary
The U.S. Court of Appeals for the Federal Circuit (the court) issued its first precedential opinion to an appeal from a derivation proceeding at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents Act (AIA). The AIA changed the U.S. patent system from a “first to invent” to a “first to file” system. The proceeding was brought by Global Health Solutions (GHS), who discovered that a former collaborator, Marc Selner, filed a patent application first on an invention that GHS believed was derived from the founder of GHS, Bradley Burnam. Based on the time stamp of an email, the PTAB found that Selner provided corroborating evidence that showed he independently conceived of the invention separately from Burnam, and therefore had not derived the invention from Burnam.1 As Selner’s conception was independent from Burnam, the court affirmed the finding of no derivation. This case is significant because it clarifies how the AIA reshaped inventorship disputes when the U.S. moved from a “first to invent” to a “first inventor to file” system, and highlights the importance of carefully documenting inventive contributions, especially among collaborating parties.
Background
The AIA was signed into law by President Barack Obama, effective March 16, 2013, representing the most significant change to U.S. patent law since 1952. This bipartisan law switched the U.S. patent system from a “first to invent” to a “first to file” system. Previously, the U.S. was among one of very few countries to use a first-to-invent system. This transition brought U.S. patents in lockstep with global patent systems. While many individuals know of this transition, the court recently emphasized that our system is not merely “first to file,” but that it is a “first [independent inventor] to file” system. More than a decade after the AIA was enacted, the nuances of derivation proceedings were brought to the forefront with the decision in GHS v. Selner.2
In these proceedings, an alleged inventor petitions the PTAB to determine whether the first filer independently conceived the invention or instead, derived it from the petitioner. The derivation proceeding must be filed within one year of the first publication of a patent containing a claim believed to be derived from the petitioner’s invention.
The PTAB conducts the derivation proceeding to decide who truly has rights to the patent for the invention. The court in GHS v. Selner clarified that the central question in derivation proceedings is whether the first filer independently conceived the invention, not whether they conceived it before the petitioner.
The Federal Circuit’s Analysis
On August 26, 2025, Judge Leonard P. Stark authored the first opinion to review a PTAB’s derivation proceeding.3 In that opinion, the court emphasized that the AIA derivation proceedings are meaningfully different from the pre-AIA analysis.4
Under AIA Section 135(b), the PTAB must decide whether an earlier application was filed by someone who derived the invention, without authorization, from another person.5
In this case, the court relied heavily on pre-AIA case law, concluding that “the required elements of a derivation claim have not changed other than to the extent necessary to reflect the transition from a first-to-invent to a first-to-file system of patent administration.”6
The court instructed that the proper inquiry for a derivation proceeding is whether the first filer independently conceived7 the invention, not simply whether they conceived it earlier than the party alleging derivation (as was the focus of the PTAB’s decision). Further, the court reaffirmed that conception may occur without reduction to practice, rejecting GHS’s argument that reduction to practice is required for independent conception in a derivation proceeding.8
The court further instructed that the evidence necessary to prove independent conception for a derivation proceeding requires more than just an inventor’s testimony. This decision reaffirms the longstanding requirement that an inventor’s testimony must be corroborated.9 In this case, contemporaneous emails retrieved from Selner’s AOL account, supported by a law clerk’s declaration, were sufficient corroboration to show that Selner conceived of the invention independently.
Conclusion
Companies who have reason to believe that a patented invention was derived from them should understand the derivation proceeding process, including the strict one year from patent publication deadline to initiate the proceeding.10 For all innovative companies, particularly when collaborating with third parties, this case highlights the critical importance of carefully documenting who conceived of an invention and when.
Key Takeaways
- Document the Inventive Process.
- Corroboration is critical. As with pre-AIA analysis, documentary evidence such as contemporaneous emails, lab notebooks, and metadata are essential to support an inventor’s testimony.
- In this case Global Health Solutions, LLC v. Selner, the court found that the emails with a time and date stamp, combined with a declaration from the individual who collected the email from the server, were sufficient corroboration.
- Preserve Metadata.
- Ensure that documents and digital records retain metadata. In this case, email timestamps and metadata were central to proving independent conception.
- Practitioners should caution clients not to self-collect electronic records without professional guidance to avoid altering metadata.
- Establish Collaboration Agreements.
- When companies share office space or collaborate informally, disputes can arise if ownership of resulting IP is not clearly defined. Parties should execute collaboration agreements at the outset to reduce the risk of derivation proceedings.
- In this case, the parties shared office space and collaborated on commercial projects. It appears that the parties had not contemplated who would own the resulting IP and could have avoided these issues by having a contract in place before collaborating.
- Applicability to Plant and Design Patents.
- Although the bulk of derivation disputes are expected in utility patents, plant and design patents may also give rise to derivation claims. Practitioners should advise clients to maintain corroborated records and agreements in all invention contexts.
- For plant and design patents, it is important for clients to document and create corroborated records and agreements to prove innovation. These patents would lend themselves more to a derivation proceeding because of the incremental or overlapping nature of plant and design patents with utility patents or previous plant patents.
[1] Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 WL 2446374, at *1 (Fed. Cir. Aug. 26, 2025).
[2] Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 U.S. App. LEXIS 21801, 2025 WL 2446374 (Fed. Cir. Aug. 26, 2025).
[3] The derivation process first was submitted on August 11, 2017, the PTAB instituted a derivation proceeding on April 6, 2022, and the appeal was decided eight years after the first filing for derivation on August 26, 2025.
[4] Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 WL 2446374, at *4 (Fed. Cir. Aug. 26, 2025).
[5] 35 U.S.C. § 135(b).
[6] Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 WL 2446374, at *4 (Fed. Cir. Aug. 26, 2025).
[7] “Conception is defined as ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention…. Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.’” Regents of the Univ. of California v. Broad Inst., Inc., 136 F.4th 1367, 1378 (Fed. Cir. 2025) citing Burroughs Wellcome Co. v. Barr Lab’ys, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
[8] Glob. Health Sols. LLC v. Selner, No. 2023-2009, 2025 WL 2446374, at *7 -*8 (Fed. Cir. Aug. 26, 2025).
[9] The court cited Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993) and Shu-Hui Chen v. Bouchard, 347 F.3d 1299 (Fed. Cir. 2003).
[10] “An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’ claim to the invention.” (https://www.uspto.gov/patents/ptab/trials/derivation-proceeding).
