What is the definition of a contested case in patent law?
According to MPEP 2301.02, a contested case is defined as: “[A] Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under ยง 41.3. An appeal in an inter partes reexamination is not a contested case.” In simpler terms, a contested case is a proceeding before the Patent Trial and Appeal Board…
Read MoreWhere can I find information about derivation proceedings at the USPTO?
The MPEP 2314 provides guidance on where to find information about derivation proceedings at the USPTO. It states: “For further information, see 37 CFR part 42, subpart E; see also the Board’s Patent Trial Practice Guide available at www.uspto.gov/patents-application-process/appealing-patent-decisions/resources/board-trial-rules-and-practice.” To learn more about derivation proceedings, you should consult: The Code of Federal Regulations (37 CFR…
Read MoreWhat types of patent proceedings can the Board assume jurisdiction over?
The Board of Patent Appeals and Interferences (BPAI) has broad authority to assume jurisdiction over various types of patent proceedings. According to MPEP 2312, the Board can take control of: Regular patent applications Reexamination proceedings Reissue applications Issued patents with derivation petitions The MPEP specifically states: “The Board may assume jurisdiction of any application, including…
Read MoreWhat regulations govern the conduct of derivation proceedings?
The conduct of derivation proceedings is governed by regulations prescribed by the Director of the United States Patent and Trademark Office (USPTO). According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and…
Read MoreCan the Patent Trial and Appeal Board correct inventor names in a derivation proceeding?
Yes, the Patent Trial and Appeal Board (PTAB) has the authority to correct inventor names during a derivation proceeding. This power is explicitly stated in MPEP 2310.01, which cites 35 U.S.C. 135(b): “In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue.”…
Read MoreWhat is the primary purpose of a derivation proceeding?
The primary purpose of a derivation proceeding is to determine the true inventor of a claimed invention when there is a dispute between two patent applications. This is outlined in 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…
Read MoreWhat 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…
Read MoreWhat is the scope of MPEP Chapter 2300 regarding derivation proceedings?
MPEP Chapter 2300 provides information on interference and derivation proceedings, but it’s important to note its limitations regarding actions at the Board during derivation proceedings. According to MPEP 2314: “Action at the Board during a derivation proceeding is beyond the scope of this Chapter.” This means that while MPEP Chapter 2300 covers various aspects of…
Read MoreHow do interference and derivation proceedings affect patent term adjustment?
Interference and derivation proceedings can impact patent term adjustment (PTA) in two ways, as outlined in MPEP 2731: They can create a basis for PTA under 35 U.S.C. 154(b)(1)(C)(i) They can reduce the amount of B-delay awarded under 35 U.S.C. 154(b)(1)(B)(ii) Regarding the first point, MPEP 2731 states: “37 CFR 1.703(c) pertains to the provisions…
Read MoreWhen can the Board assume jurisdiction in patent proceedings?
The Board of Patent Appeals and Interferences (BPAI) has broad authority to assume jurisdiction in various patent-related proceedings. According to MPEP 2312: “The Board may assume jurisdiction of any application, including those involved in reexamination proceeding(s) or reissue application(s), or any issued patent in which a petition for derivation has been filed.” This means the…
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