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.