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8.0 – America Invents Act (AIA)

Passed on September 16, 2011 this Act represents a major change in the United States patent system.

Some major changes include: removal of the inter partes reexamination, addition of the inter partes review and post grant review (replacing the inter partes reexamination), removal of best mode as a grounds for invalidating a granted patent, addition of micro entities as a subset to the small entity which will receive 75% off certain fees, extension of prior user rights defense, implementation of a prioritized examination, removal of certain restrictions on the Oath/Declaration, implementation of the supplemental examination, cancelation of the statutory invention registration option, moving from first-to-invent to first-inventor-to-file and addition of the derivation proceeding as a safeguard to the first-inventor-to-file system.

The USPTO will begin testing on this additional material beginning October 2012.  As with all new questions on the patent bar exam, these questions will be first entered into the exam as beta questions and will be subsequently moved to regular scored questions once this beta phase is complete.

The following topics of the America Invents Act will be discussed in different posts of the study blog:

Also, the USPTO has a nice website which has a lot of helpful information on the new America Invents Act implementation.  Click on the picture below to be taken to this website and review.  Please take note of the information on the left side of the website for easy navigation of the various resources available to you.

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8.11 “Derivation Proceeding” – America Invents Act

Derivation Proceeding America Invents Act Patent Law

Derivation Proceeding America Invents Act Patent Law


The derivation proceeding described in section 3 of the America invents act is intended to ensure the person obtaining a patent is a true inventor and did not derive the invention from another. If a question as to the true inventor arises between two applicants a derivation proceeding can be instituted before the patent trial and appeal Board.  The derivation proceeding replaces the interference proceeding.


Derivation proceeding may only be requested if the inventor has filed an application claiming the same or substantially the same as another applicant.  This can be instituted by copying earlier filed application, making necessary changes to the application to reflect true invention or submitting a petition for derivation proceeding along with the application.

Derivation petition must be filed under oath and be supported by substantial evidence.  It must: identify the disputed patent or application; Distinctly point out how earlier invention was derived from petitioners; Show communication of the derived invention from petitioner to initial applicant; Provide affidavit for lack of authorization from petitioner for filing the initial application.

Derivation proceedings must be filed within one year of the first publication of the invention by the earlier applicant.

Director will file a derivation proceeding if the petition successfully shows: The petitioner’s patent is the same or substantially the same and is not patently distinct from the earlier applicant’s invention; The invention was derived from the petitioner; The first invention was filed without the inventors authorization; Construction of the petitioner’s claims accurately reflects the true invention.

A decision by the director to institute a derivation proceeding is final and non-appealable.  A settlement agreement may be achieved to terminate the proceedings.  The settlement agreement will terminate the proceeding as long as a patent trial and appeal board does not find it inconsistent with the evidence of record.  If the board does find the settlement inconsistent with the evidence, it may disregard it and continue the derivation proceeding.  Binding arbitration may be used to determine inventorship.

Key dates

March 16, 2013

  • Effective date of the derivation proceeding
  • Subject to all patents and patent applications of the first to file system

September 11, 2012

  • Final rules released on derivation proceedings

Key concepts

  • Derivation proceeding is intended to ensure the true inventor obtains the patent
  • Insures invention is not a derivation from another inventor
  • Replaces interference proceeding
  • Can be instituted by filing a new application along with the petition for derivation proceeding
  • Must be filed within one year of first publication of derived invention
  • The petition must sufficiently show
    • Petitioner’s invention is the same or substantially the same and is not patently distinct from the earlier applicants invention
    • Invention was derived from the inventor on the petitioners application
    • Earlier application was filed without the inventors authorization
      • Filed through an affidavit
    • Construction of petitioner’s claims accurately reflects the true invention
    • Must identify the disputed patent or application
  • The decision to institute the derivation is final and non-appealable
  • Can be terminated by a settlement with a written agreement
  • Board must find the settlement to be consistent with the evidence to terminate the proceeding
  • If the settlement is not consistent with the evidence the derivation proceeding will continue