How does the America Invents Act (AIA) relate to derivation proceedings?

The America Invents Act (AIA) plays a crucial role in the context of derivation proceedings. According to MPEP 2310:

“Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA).”

This means that:

• Derivation proceedings are a direct result of the AIA’s implementation
• They only apply to patent applications filed under the AIA’s first-inventor-to-file system
• The AIA shifted the U.S. patent system from a first-to-invent to a first-inventor-to-file system
• This change necessitated a new process (derivation proceedings) to resolve disputes about the true origin of an invention

In essence, the AIA created the framework for derivation proceedings as part of its broader reforms to modernize the U.S. patent system.

To learn more:

• AIA
• derivation proceeding
• first-inventor-to-file
• patent reform
• PTAB