PTAB Institutes Its First Derivation Proceeding

On March 21, 2018, the PTAB instituted its first derivation proceeding under 37 C.F.R. § 42.400 et seq., having denied many petitions over the years.  Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 (Paper 32).  The claims were directed to spacer frame assemblies for windows.

The Leahy-Smith America Invents Act has replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013.  The purpose of a derivation proceeding is to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and whether the earlier application claiming such invention was filed without authorization.  See 35 U.S.C. § 135(a)(1); 37 C.F.R. § 42.405(b)(2).

The PTAB noted that it was appropriate under the rules for Andersen to assert 22 separate derivations in a single petition.  The PTAB determined that there was substantial evidence to support the conclusion that each of the 22 inventions was conceived by Andersen’s employee and communicated to GED, and that at least one of Andersen’s claims is the same or substantially the same as GED’s claimed invention.

With this institution, practitioners now have the opportunity to see how the PTAB will apply its procedures in the context of a derivation proceeding.