Category: Derivation proceedings

Derivation in 2015: Still No Instituted Proceedings

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.

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Derivation: Possession versus Conception

Author:  Anthony A. Hartmann

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.

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Finnegan eBook Summarizes Various AIA Considerations and U.S. Patent Trends in Chemical and Pharmaceutical Industries

Author: Adriana L. Burgy

On December 2, 2013, Finnegan launched The Chemical and Pharmaceutical Innovation Report 2013. The Report is a complementary eBook for patent practitioners, entrepreneurs, business executives, venture capitalists, and inventors that benchmarks the patent activities in the chemical and pharmaceutical industries from 2006 to 2012.

The Report includes concise summaries of the changes under the America Invents Act (“AIA”). The AIA sections summarized include: best mode, derivation proceedings, first-inventor-to-file, inter partes review, post grant review, pre-issuance submissions, and supplemental examination. These summaries identify considerations for developing and optimizing patent strategies and describe the various proceedings that may be utilized in lieu of or in addition to litigation.

The Report 2013 also details chemical and pharmaceutical patenting and application publication trends, district court litigation trends, appellate litigation trends, and categorizes Federal Circuit decisions from 2006 to 2012.

Download a complimentary copy of The Report 2013 eBook here.


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