How should examiners handle claims in a petitioner’s application during a derivation proceeding?

According to MPEP 2311, examiners should handle claims in a petitioner’s application during a derivation proceeding as follows:

“The claims in petitioner’s application that are patentably indistinct from respondent’s application or patent should be subject to a rejection under 35 U.S.C. 102(a)(2) which should be maintained until jurisdiction is transferred to the Board to conduct the derivation proceeding.”

This means that if the petitioner’s claims are essentially the same as those in the respondent’s application or patent, the examiner should reject them under 35 U.S.C. 102(a)(2). This rejection remains in place until the Patent Trial and Appeal Board takes over the derivation proceeding.

To learn more:

• derivation proceeding
• petitioner’s claims
• rejection
• 35 U.S.C. 102(a)(2)
• patentably indistinct