Derivations

An exception to the first-to-file AIA provisions
Derivation proceedings before the Patent Trials and Appeals Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) provide an exception to the otherwise absolute first-to-file provisions of the America Invents Act (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. Derivation addresses originality—who invented the subject matter at issue. Finnegan frequently advises clients on resolving inventorship disputes.