USPTO Trial Practice

Derivation Proceedings

Occasionally multiple people file separate patent applications directed towards the same invention. Sometimes these multiple filings are an innocent coincidence; other times they are a sign of an attempt to patent someone else’s invention. A derivation proceeding can be instituted where there is a dispute between two inventors as to who the true inventor is.


Only a patent or application containing one or more claims having an effective filing date on or after March 16, 2013 will be eligible for a derivation proceeding. A petition to institute a derivation proceeding must be filed within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier applications’ claim to the invention. A petition for a derivation proceeding must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application. 

Our USPTO Trial Practice Attorneys

Joseph A. KromholzFounding Partner
Patrick J. FleisPartner