11.3 Derivation Proceedings Under the AIA

11.3 Derivation Proceedings Under the AIA

With the enactment of the Leahy-Smith America Invents Act (AIA), the United States patent system transitioned from a first-to-invent regime to a first-inventor-to-file (FITF) regime for applications having an effective filing date on or after March 16, 2013. This statutory overhaul fundamentally transformed contest proceedings before the Patent Trial and Appeal Board (PTAB). While pre-AIA applications relied on Interference Proceedings under former 35 U.S.C. § 135 to determine priority of invention, AIA applications are subject to Derivation Proceedings under 35 U.S.C. § 135 and MPEP Chapter 2300.

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Interferences vs. Derivation Proceedings

Understanding the conceptual difference between pre-AIA Interferences and AIA Derivation is a frequent focal point of the Patent Bar Examination:

• Pre-AIA Interferences: Purpose was to determine priority of invention (i.e., who was the first person to invent the claimed subject matter). Two independent inventors who derived nothing from each other could be placed in an interference to determine priority based on conception, reduction to practice, and diligence.
• AIA Derivation Proceedings: Purpose is to determine derivation (i.e., whether an earlier-filing applicant stole or derived the claimed invention from a true inventor without authorization). Priority of independent invention is irrelevant under FITF; derivation focuses solely on whether the respondent derived the invention from the petitioner.

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Statutory Elements to Establish Derivation (35 U.S.C. § 135(a))

Under 35 U.S.C. § 135(a) and 37 C.F.R. § 42.405, a derivation petition filed by an applicant or patentee must set forth detailed factual allegations supported by corroborating evidence establishing two core legal elements:

1. Prior Conception by Petitioner: The petitioner must prove complete conception of the claimed invention prior to any conception or filing date attributable to the respondent. The conception must be fully enabled and definite, leaving only ordinary skill to reduce the invention to practice.
2. Unauthorized Communication to Respondent: The petitioner must prove that this complete conception was communicated (directly or indirectly) to the respondent without authorization, such that the respondent derived the claimed subject matter from the petitioner.

Corroboration Requirement:

Under 37 C.F.R. § 42.408, inventor testimony alone is insufficient to establish prior conception or communication. Factual allegations of derivation must be corroborated by independent evidence, such as dated lab notebooks, email communications, non-disclosure agreements (NDAs), witness declarations, or physical prototypes.

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Strict 1-Year Petition Window (35 U.S.C. § 135(a)(2))

Procedural timeliness is strictly enforced in derivation proceedings. Under 35 U.S.C. § 135(a)(2) and 37 C.F.R. § 42.403:

• The Rule: A petition for derivation must be filed within 1 year from the date of first publication of a claim to an invention that is the same or substantially the same as the derived invention in an application or issued patent of the respondent.
• Statutory Bar: This 1-year window is a strict statutory deadline. If a petitioner fails to file within 1 year of the respondent's claim publication or patent grant date, the derivation petition is time-barred and must be dismissed by the Board.
• Same or Substantially the Same Claim Requirement: The petitioner must currently have (or amend to include) at least one claim in its own application/patent that is "same or substantially the same" as the respondent's derived claim.

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PTAB Trial Procedures for Derivation (37 C.F.R. Part 42, Subpart E)

Derivation proceedings are conducted as formal administrative trials before a three-judge panel of the PTAB under 37 C.F.R. Part 42, Subpart E.

Key Procedural Steps:

1. Petition Filing: Petitioner files petition along with the required statutory fee under 37 C.F.R. § 42.15(c) and supporting affidavits/evidence.
2. Institution Decision: The Board reviews the petition and respondent's preliminary response. The Board will institute a derivation trial only if it determines that the standards in 37 C.F.R. § 42.408 are met (demonstrating a reasonable likelihood of derivation).
3. Trial Phase: If instituted, the trial involves routine discovery (cross-examination of declarants), motion practice, and oral argument.
4. Final Written Decision: The PTAB issues a Final Written Decision under 35 U.S.C. § 135(d).

Remedies & Outcomes:

• If derivation is proven, the Board issues a decision canceling the derived claims in the respondent's patent or refusing them in the respondent's application.
• The Board may correct inventorship or authorize the petitioner to amend its application to claim the derived subject matter with the benefit of the respondent's filing date under 35 U.S.C. § 135(d).

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Settlement of Derivation Proceedings (35 U.S.C. § 135(e))

Under 35 U.S.C. § 135(e) and 37 C.F.R. § 42.410, parties to a derivation proceeding may settle their dispute, subject to strict statutory recording rules:

• Written Agreement Required: Any agreement or understanding between the parties (including collateral agreements) made in connection with or in contemplation of the termination of a derivation proceeding must be reduced to writing.
• Filing Prior to Termination: A true copy of the written settlement agreement must be filed in the USPTO before the termination of the derivation proceeding.
• Confidentiality: Parties may request that the settlement agreement be kept confidential and separate from the public file, accessible only to government agencies or persons showing good cause.

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Derivation vs. Interference Comparison Table