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…
Read MoreWhat is the role of the Patent Trial and Appeal Board (PTAB) in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a central role in derivation proceedings. As stated 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…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue application examination?
The Patent Trial and Appeal Board (PTAB) can significantly impact the examination of reissue applications: Examiners must check the status of any pending PTAB trial related to the patent being reissued The PTAB may exercise exclusive jurisdiction over applications involved in pending trials Examiners should ensure the PTAB has not suspended the reissue application before…
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