MPEP § 2310 — Derivation Proceedings (Annotated Rules)

§2310 Derivation Proceedings

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 2310, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Derivation Proceedings

This section addresses Derivation Proceedings. Primary authority: 35 U.S.C. 135. Contains: 1 permission and 2 other statements.

Key Rules

Topic

Key Changes Under AIA

3 rules
StatutoryInformativeAlways
[mpep-2310-3abd6bb5de762f266eea1849]
Derivation Proceeding for Invention Claimed Without Authorization
Note:
A trial proceeding under 35 U.S.C. 135 to determine if an inventor derived the claimed invention from another and if the earlier application was filed without authorization.

A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA). An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding with the Board.

Jump to MPEP SourceKey Changes Under AIADetermining Whether Application Is AIA or Pre-AIADetermining AIA vs Pre-AIA Applicability (MPEP 2159)
StatutoryInformativeAlways
[mpep-2310-8343fc9536abe98e68b81343]
Derivation Proceeding for AIA Patents
Note:
This rule states that derivation proceedings are applicable only to patents subject to the first-inventor-to-file provisions of the America Invents Act (AIA).

A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA). An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding with the Board.

Jump to MPEP SourceKey Changes Under AIAAIA Overview and Effective DatesPTAB Jurisdiction
StatutoryPermittedAlways
[mpep-2310-e9bedbf91a347e2b68f4e411]
Petition for Derivation Proceeding Allowed Under AIA
Note:
An applicant subject to first-inventor-to-file provisions may petition the Board to institute a derivation proceeding to determine if an inventor derived the claimed invention from another.

A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA). An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding with the Board.

Jump to MPEP SourceKey Changes Under AIAAssignee as Applicant SignatureApplicant and Assignee Filing Under AIA

Citations

Primary topicCitation
Key Changes Under AIA35 U.S.C. § 135

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31