Author: Anthony A. Hartmann
Editor: Michael J. McCabe II
The Patent Trial and Appeal Board (PTAB) denied three petitions to institute derivation proceedings, sought by Catapult Innovations against three patent applications assigned to adidas AG, finding that Catapult failed to establish a prior “conception.” DER2014-00002, Paper 19 (July 18, 2014); DER2014-00005, Paper 13 (July 18, 2014); DER2014-00006, Paper 19 (July 18, 2014). Catapult’s derivation petitions were the first to be filed under 37 C.F.R. § 42.405. To date, no derivation proceedings have been instituted.
While U.S. patent law is now a first-inventor-to-file system, derivation proceedings under the American Invents Act (AIA) provide a mechanism to ensure that the first person to file a patent application is actually the true inventor. Here, Catapult alleged that adidas AG’s patent application claims were derived from a two-day presentation and demonstration of an athletic activity monitoring system made to AWSE, a wholly-owned subsidiary of adidas AG.