Patent and Trademark Office Publishes Final Rules for Derivation Proceedings

By Charles Pierce

On September 10, The Patent and Trademark Office published finals rules designed to ensure that a person applying for a patent is the true inventor through a new trial proceeding, the derivation proceeding.  An applicant who is not first to file (the petitioner) will be able to petition for a derivation proceeding and attempt to show that  another applicant’s (the respondent) claimed invention was derived from the petitioner’s invention.  Derivation proceedings will take place before the Patent Trial and Appeal Board.

The petition must show by substantial evidence that the petitioner’s application has at least one claim which is the same or substantially similar to the respondent’s claimed invention and demonstrate that the respondent’s claimed invention was derived from the petitioner’s invention.  The petitioner must also show, for each of his claims, why the respondent’s claimed invention is substantially similar, and identify how the claim should be construed.[1]  Such a petition must be filed within one year of the publication of the petitioner’s relevant claims.[2]

These new rules will be codified in 37 C.F.R. Part 42, Subpart E, and will take effect on March 16, 2013.  The full text of the rules along with the PTO’s responses to comments may be found at or 77 Fed. Reg. 56067 (Sept. 11, 2012).

[1] Changes to Implement Derivation Proceedings, 77 Fed. Reg. 56067, 56091 (Sept. 11, 2012) (to be codified at 47 C.F.R. Part 42).
[2] Id.


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