What happens after a derivation proceeding is decided?

After a derivation proceeding is decided, jurisdiction over the application returns to the examiner. The examiner must consider any recommendations for further action and may need to reopen prosecution. As stated in MPEP 2315:

“If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.”

The examiner may also need to update the search and reopen prosecution for any claims not disposed of in the judgment.

To learn more:

• derivation proceeding
• patent examination
• prosecution
• jurisdiction