Author: Anthony A. Hartmann
Editor: Aaron L. Parker
The Leahy-Smith America Invents Act (AIA) replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013. While several petitions have been filed under 37 C.F.R. § 42.400 et seq., including two in 2015, to date not a single petition has led to an instituted derivation proceeding.
In November, the PTAB dismissed the petition in Estate of L. Gerber et al. v. Cornell Univ. et al., DER2015-00011 (November 9, 2015) (Paper 5) because Petitioners failed to “cite to a pending application which they have placed on file at the United States Patent and Trademark Office.” Paper 5 at 2. Petitioners had sought a “determination from the Director that they are the joint-inventors and/or joint-owners of the pending Patent assignment for [application 14/352,350].” Estate of Gerber et al. v. Cornell Univ. et al., DER2015-00011 (October 5, 2015) (Paper 1) at 1. In denying the petition, the PTAB explained that the Office’s records did not show Gerber et al. having an ownership interest; that, even if they had, a derivation proceeding “contemplates the existence of a contest between two applications;” and a claim of joint ownership or joint inventorship does not address the requirement for a claim of derivation. Paper 5 at 4.