What is the role of the Patent Trial and Appeal Board in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a crucial role in derivation proceedings. According to MPEP 2310.01, which cites 35 U.S.C. 135(b):
“In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.”
The PTAB’s responsibilities in a derivation proceeding include:
- Evaluating the evidence presented by both parties
- Determining if the invention was indeed derived without authorization
- Deciding on the true inventor of the claimed invention
- Correcting the naming of inventors on applications or patents, if necessary
The PTAB’s decision is crucial in resolving disputes over the true inventorship of a claimed invention.
To learn more:
Topics:
MPEP 2300 - Interference And Derivation Proceedings,
MPEP 2310.01 - Statutory Basis,
Patent Law,
Patent Procedure