Who decides whether to institute a derivation proceeding?

The decision to institute a derivation proceeding is made by the Director of the United States Patent and Trademark Office (USPTO). As stated in MPEP 2310.01, which cites 35 U.S.C. 135(a)(1): “Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director…

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Who can file a petition for a derivation proceeding?

According to MPEP 2310.01, an applicant for a patent can file a petition to institute a derivation proceeding. Specifically, the statute states: “An applicant for patent may file a petition with respect to an invention to institute a derivation proceeding in the Office.” This means that if you are an applicant who believes that your…

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How does the USPTO determine whether to institute a derivation proceeding?

The U.S. Patent and Trademark Office (USPTO) follows specific criteria to determine whether to institute a derivation proceeding. According to MPEP 2310: “The petition, and any supplemental information filed, will be reviewed to determine whether they set forth a basis for instituting a derivation proceeding.“ The USPTO considers several factors, including: Whether the petition is…

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What is the role of a Technology Center Practice Specialist in derivation proceedings?

A Technology Center Practice Specialist plays an important advisory role in handling complex issues that may arise from derivation proceedings. According to MPEP 2315: “Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.” This guidance suggests that Technology Center Practice Specialists are resources for…

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What is the purpose of a derivation proceeding?

The purpose of a derivation proceeding is twofold, as outlined in MPEP 2310: “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…

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What is the scope of the PTAB’s jurisdiction in a derivation proceeding?

The Patent Trial and Appeal Board (PTAB) exercises broad and exclusive jurisdiction over patent applications involved in derivation proceedings. According to MPEP 2313, which cites 37 CFR 42.3: “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.” This means that the…

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When does the PTAB’s jurisdiction over a patent application in a derivation proceeding end?

The Patent Trial and Appeal Board (PTAB) retains jurisdiction over a patent application involved in a derivation proceeding until the proceeding is formally terminated. As stated in MPEP 2313: “The Board retains jurisdiction over the derivation proceeding until it is terminated.” This means that the PTAB maintains exclusive control over the application throughout the entire…

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What happens to a patent application once a derivation proceeding is instituted?

Once a derivation proceeding is instituted, the Patent Trial and Appeal Board (PTAB) acquires exclusive jurisdiction over the involved patent application. As stated in MPEP 2313: “The Board acquires jurisdiction over any involved file when the Board initiates a derivation proceeding. Other proceedings for the involved file within the Office are suspended except as the…

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