Derivation Proceedings Explained: What They Are and Why Manufacturing Companies Should Know About Them

Derivation addresses originality—who invented the claimed subject matter—and can arise when parties collaborate to develop and market an invention or when an idea is shared for peer review. It is not a new concept. Pre-America Invents Act (AIA), originality was rooted in § 102(f) and typically arose during an interference. Post-AIA, originality is resolved in a derivation proceeding similar to an inter partes review. While derivation proceedings have been relatively rare—only 18 petitions filed to date—the U.S. Patent Trial and Appeal Board (PTAB) issued its first-ever post-AIA derivation decision in March 2019: Andersen Corp. v. GED Integrated Solutions, Inc. This decision is our first substantive insight into these new proceedings. Join us as we discuss how the PTAB has been handling derivation petitions overall and its analysis from Andersen, including: 

• the situations in which derivations frequently occur for manufacturers;
• the requirements for a petition and burden of proof;
• the trial procedure and likely issues; and
• practical implications for addressing originality in collaborative environments.

Recorded: View On-Demand

Speakers:
Timothy McAnulty
Jeffrey Totten

Moderator:
Sydney Kestle

Date:
Thursday, June 27, 2019

Time: 
10:00 -11:00 a.m. PDT
1:00 - 2:00 p.m. EDT
7:00 - 8:00 p.m. CEST

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