What evidence is required to prove derivation under pre-AIA 35 U.S.C. 102(f)?

Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements:

1. Complete Conception: There must be evidence of complete conception by another person. The MPEP states: Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
2. Communication: The complete conception must be communicated to the alleged deriver. The MPEP clarifies: Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.

Importantly, the party alleging derivation does not need to prove certain elements. The MPEP notes:

• An actual reduction to practice is not required to show derivation.
• The derivation does not need to be of public knowledge.
• The site of derivation does not need to be in the United States.

When evaluating evidence of derivation, patent examiners and the courts will consider these factors to determine if a rejection under pre-AIA 35 U.S.C. 102(f) is appropriate.

To learn more:

• derivation
• pre-AIA 102(f)
• complete conception
• communication
• evidence