Patent Office Trials - Derivations
Derivation proceedings provide an exception to the otherwise absolute first-to-file provisions of the 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. Although derivation proceedings are new, derivation of an invention is an often-raised issue in interferences in cases involving some element of collaboration. Who conceived the invention and when are important components of both priority of invention and derivation of an invention. Finnegan’s extensive interference experience well prepares us to advise clients regarding the opportunities afforded by derivation proceedings when a competitor derives an invention and is first to file.