37 CFR § 42.405 — Content of petition. (MPEP Coverage Index) – BlueIron IP
37 CFR § 42.405 Content of petition.
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 42.405, including 0 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.
Official MPEP § 42.405 — Content of petition.
Source: USPTOLast Modified: 10/30/2024 08:50:22
42.405 Content of petition.
- (a) Grounds for standing. The petition must:
- (b) In addition to the requirements of §§
42.8
and
42.22
, the
petition must:
- (1) Provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding;
- (2) Demonstrate that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and
- (3) For each of the respondent’s claims
to the derived invention,
- (i) Show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and
- (ii) Identify how the claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f) , the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.
- (c) Sufficiency of showing. A derivation showing is not sufficient unless it is supported by substantial evidence, including at least one affidavit addressing communication of the derived invention and lack of authorization that, if unrebutted, would support a determination of derivation. The showing of communication must be corroborated.
[Added 77 FR 56068, Sept. 11, 2012, effective Mar. 16, 2013]