Derivation in 2015: Still No Instituted Proceedings

The Leahy-Smith America Invents Act (AIA) replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013. While several petitions have been filed under 37 C.F.R. § 42.400 et seq., including two in 2015, to date not a single petition has led to an instituted derivation proceeding.

In November, the PTAB dismissed the petition in Estate of L. Gerber et al. v. Cornell Univ. et al., DER2015-00011 (November 9, 2015) (Paper 5) because Petitioners failed to “cite to a pending application which they have placed on file at the United States Patent and Trademark Office.” Paper 5 at 2.  Petitioners had sought a “determination from the Director that they are the joint-inventors and/or joint-owners of the pending Patent assignment for [application 14/352,350].” Estate of Gerber et al. v. Cornell Univ. et al., DER2015-00011 (October 5, 2015) (Paper 1) at 1. In denying the petition, the PTAB explained that the Office’s records did not show Gerber et al. having an ownership interest; that, even if they had, a derivation proceeding “contemplates the existence of a contest between two applications;” and a claim of joint ownership or joint inventorship does not address the requirement for a claim of derivation. Paper 5 at 4.

The last time the PTAB had considered the merits of a petition was July 2014, when three related petitions were dismissed also for failing to address required elements of a derivation petition. See Catapult Innovations PTY Ltd v. adidas AG, DER2013-00002, -00005, and -00006 (July 18, 2014). While the Petitioner had arguably shown derivation of the claimed invention in the three petitions, it had not established a prior conception of the derived invention. Without arguing a prior conception, the Petitioner had not established one of the elements of derivation.

With respect to the other derivation petition before the PTAB in 2015, the PTAB has only accorded a filing date. Sports Nutrition Res. Ltd. v. Chemi Nutra, DER2015-00003 (December 31, 2014) (Paper 3) at 1. Of note, Sports Nutrition had relied on the same patent application to assert derivation against another Chemi Nutra application in 2013. See Sports Nutrition Res. Ltd. v. Chemi Nutra, DER2013-00001 (June 6, 2013) (Paper 1) at 3. The PTAB will not be deciding the merits of the petitions until jurisdiction transfers from the Examiner, i.e., when “Petitioner’s claim is in condition for allowance (absent the earlier filed application the derived the invention). Paper 3 at 2 (citing 77 Fed. Reg. 56068, 56-69 (September 12, 2012). Since these petitions were not dismissed at an early stage, like those of Estate of Gerber and Catapult Innovations, there remains a good chance we will see them instituted in 2016.