An exception to the first-to-file AIA provisions
Derivation proceedings before the Patent Trials and Appeals Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) provide an exception to the otherwise absolute first-to-file provisions of the America Invents Act (AIA). For patent applications having an effective filing date on or after March 16, 2013, the derivation proceeding is available to an inventor who believes that an earlier-to-file patent applicant derived the invention without authorization. Derivation addresses originality—who invented the subject matter at issue. Finnegan frequently advises clients on resolving inventorship disputes.
From helping clients assess the conception and communication of inventions, which are key components of establishing derivation, to counseling on the interplay between derivation, contract, and trade secret proceedings, we work with inventors to compellingly tell their invention origin stories. With extensive experience in PTAB and interference proceedings, Finnegan attorneys stand ready to prepare and litigate petitions for derivation.
DER2022-00004, PTAB, Judges Arbes, Lee, Kennedy
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