Derivation Proceedings Under FITF

Although U.S. patent law is now a first-inventor-to-file (FITF) system, derivation proceedings under the America Invents Act (AIA) are intended to ensure that the first person to file a patent application is actually the true inventor. An inventor who is not the first to file a patent application may file a derivation petition with the USPTO to challenge an earlier applicant’s right to a patent if he can show his invention was derived by the person who was first to file. In the derivation petition, the inventor who was not the first to file must demonstrate that the earlier applicant is claiming an invention derived from the inventor. Patent applications and patents containing at least one claim having an effective filing date on or after March 16, 2013, are eligible for derivation proceedings before the Patent Trial and Appeal Board (PTAB).

Only an applicant for a patent may file a derivation petition. Thus, the petitioner must file a patent application before or with a derivation petition. The petition is due by the earlier of (1) one year from the date on which the alleged deriver’s patent was granted or (2) one year from the date on which the alleged deriver’s application was published.

A derivation petition (full requirements of a petition are stated in 37 C.F.R. § 42.405) must demonstrate that the petitioner’s patent application includes at least one claim that is the same or substantially the same as the respondent’s (i.e., the alleged deriver’s) claims and the same or substantially the same as the invention disclosed to the respondent. Notably, the petitioner does not need to show that the respondent’s claims are identical to the petitioner’s; substantial similarity will suffice. The petition must also demonstrate that a claimed invention in the earlier-filed application was derived from an inventor named in the petitioner’s application, and that the inventor did not authorize the filing of the earlier application. At least one affidavit must accompany the petition substantiating the communication of the derived invention to the respondent and the respondent’s lack of authorization to file a patent application for the derived invention. If the Board concludes that claims from the earlier-filed application were derived without authorization and the application is pending, the Board’s decision acts as a final refusal by the USPTO of the derived claims. If a finding of derivation is made regarding claims of a patent and the Board’s decision is not timely appealed to the Federal Circuit, the Board’s decision results in cancellation of those claims.