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.
Interference proceedings are disclosed in MPEP 2300.
General overview of interferences:
An interference is between either 2 patent applications, or a patent application and a granted patent. Claims do not need to be identical but they must have the same subject matter. 37 C.F.R. § 1.131 can not be used to swear behind another patent which claims the same invention however this not the case if the patent only discloses and does not claim the invention. The senior party in an interference proceeding has the earliest effective filing date and becomes the defendant automatically. If a party wins an interference this means they were the first to invent and diligently reduce the invention to practice before the other inventors conception and reduction to practice.
An interference can be provoked by another party. This is done by proposing a count including mock claim(s) and presenting or identifying a claim corresponding to the count in an application. This should include identifying the other pending application or issued patent and explaining why the interference should be issued. If the examiner suggests, the claims can be copied verbatim from the other pending application or issued patent.
The provocation of an interference with an issued patent must be done less than one year from its issue date. If the other application is published and the applicant’s filing date is after the publication the copying of the claims needs to be completed less than 1 year from the publication date. If two applications are involved the examiner will not suggest the copying of claims if more than 3 months separate the applications for a simple claim. If the claim is complex then this can be extended to 6 months. If the applicant fails to copy claims as suggested, this acts as a disclaimer on the uncopied subject matter.
Once the interference is filed, each party has access to the other parties patent file. Declarations are only required for issued patents and pending applications not with two pending applications.
If so desired, the parties can voluntarily settle before the interference terminates through a written agreement being filed with the USPTO.
Burden of proof in an interference proceeding is on the junior party, or the party with the later filing date. In the case of more than one parties being included in an interference, a party is junior to any other party who has a later filing date. In cases where the filing date is the same, whoever has the later date of execution is made the junior party.
In the case of issued patents in an interference, a higher standard of proof is required versus two applications. For issued patents clear and convincing evidence is required. For applications a preponderance of evidence is requested, this evidence doesn’t necessarily have to be clear and convincing.