USPTO Final Rule for New PTAB Derivation Proceeding | Practical Law

USPTO Final Rule for New PTAB Derivation Proceeding | Practical Law

The US Patent and Trademark Office (USPTO) published a final rule revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (PTAB).

USPTO Final Rule for New PTAB Derivation Proceeding

Practical Law Legal Update 0-521-3256 (Approx. 3 pages)

USPTO Final Rule for New PTAB Derivation Proceeding

by PLC Intellectual Property & Technology
Published on 10 Sep 2012 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) published a final rule revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (PTAB).
On September 10, 2012, following public comment on the proposed rule, the USPTO issued a final rule implementing the provisions of the America Invents Act (AIA) that create a new derivation proceeding before the Patent Trial and Appeal Board (PTAB). Derivation proceedings were created to ensure that the first person to file a patent application is the true inventor. If there is a dispute as to which of two applicants is a true inventor (as opposed to who invented it first), the PTAB will resolve it by conducting a derivation proceeding. The final rule will take effect March 16, 2013. These provisions apply to patent applications and any patents issuing from them that are subject to the AIA's first-inventor-to-file provisions.

General Procedures

Consistent with Section 3 of the AIA, the final rule states:
  • The requirements for a petition to institute a derivation proceeding.
  • The standards for showing of sufficient grounds to institute a derivation proceeding.
  • The standards for instituting a derivation proceeding.
  • The standards and procedures for conducting a derivation proceeding.
  • The procedures for arbitration and settlement.
For more details on these standards and procedures, see Practice Note, PTAB Trial Practice Rules: Derivation Proceedings.

Differences Between the Final Rule and the Proposed Rule

The final rule differs from the proposed rule by, among other things, clarifying that:
  • "Same or substantially the same invention" means patentably indistinct.
  • "The first publication" means either a patent or an application publication under Section 122(b) of the Patent Act, including a publication of an international application that designates the US.
  • A petition for a derivation proceeding must be filed within the one-year period beginning on the date of the first publication of the claim to an invention that is the same or substantially the same as the earlier application's claim to the allegedly derived invention.
  • The petition must show:
    • that the petitioner has at least one claim that is the same or substantially the same as the invention disclosed to the respondent;
    • that the inventor from whom the claimed invention was allegedly derived did not authorize the filing of the earlier application claiming the derived invention; and
    • why the respondent's claimed invention is the same or substantially the same as the invention disclosed to the respondent.
The final rule also clarifies that:
  • Personal service is not required.
  • Service may be made:
    • by US Postal Service Express Mail or a means that is at least as fast and reliable; and
    • electronically, on the parties' agreement.