How does derivation affect patent applications under pre-AIA 35 U.S.C. 102(f)?
Derivation under pre-AIA 35 U.S.C. 102(f) refers to situations where an inventor or at least one joint inventor derived an invention from another person. If derivation can be shown, it may result in a rejection of the patent application.
The MPEP states: Where it can be shown that an inventor or at least one joint inventor “derived” an invention from another, a rejection under pre-AIA 35 U.S.C. 102(f) is proper.
However, it’s important to note that derivation requires complete conception by another and communication of that conception to the alleged deriver. As explained in the MPEP: Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
Interestingly, while derivation may bar the deriver from obtaining a patent, it doesn’t necessarily prevent the original inventor from patenting the invention, unless there are other bars under pre-AIA 35 U.S.C. 102(b).
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