35 U.S.C. § 291 — Derived Patents (MPEP Coverage Index) – BlueIron IP
35 U.S.C. § 291 Derived Patents
This page consolidates MPEP guidance interpreting 35 U.S.C. § 291, including 4 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
Interference in Reissue : In appropriate circumstances, a reissue application subject to pre-AIA 35 U.S.C. 102(g) (first to invent) may be placed into interference with a patent or pending application.
What this section covers
- This section covers the placement of a reissue application subject to pre-AIA 35 U.S.C. 291 into interference with a patent or pending application.
Key obligations
- Ensure that a reissue application subject to pre-AIA 35 U.S.C. 291 may be placed into interference with a patent or pending application.
- Adhere to the provisions of 35 U.S.C. 291 for first-to-invent applications.
Practice notes
- Ensure all necessary evidence of conception is included with the reissue application.
- Failing to timely file the reissue application within the statutory time limit is a common pitfall.
Official MPEP § 291 — Derived Patents
Source: USPTOLast Modified: 10/30/2024 08:50:22
35 U.S.C. 291 Derived Patents.
[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) )*. See 35 U.S.C. 291 (pre‑AIA) for the law otherwise applicable.]
- (a) IN GENERAL.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.
- (b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.
(Amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012)and 3(h) (effective March 16, 2013)*, 125 Stat. 284.)
*NOTE: The provisions of 35 U.S.C. 291 (pre‑AIA) , as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note) ), if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) , that occurs before March 16, 2013; or
(B) a specific reference under 35 U.S.C. 120 , 121 , or 365(c) , to any patent or application that contains or contained at any time such a claim.
- Section 102
- Aia Vs Preaia 102
- Preaia 102G
- Signature Requirements
- Signature Assignee
| MPEP Section | Rules |
|---|---|
| MPEP § 1449.02 | |
| MPEP § 2303 |