What happens if a derivation proceeding is not instituted?

If a derivation proceeding is not instituted, the petitioner has options for further action. According to MPEP 2310:

“If the Director decides not to institute a derivation proceeding, a notice of non-institution will be sent to the petitioner and the patent owner, as applicable.“

In this case:

• The petitioner may request a rehearing within 30 days of the decision not to institute.
• If the rehearing is denied, the petitioner may appeal to the U.S. Court of Appeals for the Federal Circuit.
• The patent application or patent that was the subject of the petition will continue its normal prosecution or maintenance process.

It’s important to note that the decision not to institute a derivation proceeding does not preclude the petitioner from challenging the patent through other means, such as post-grant review or inter partes review, if applicable.

To learn more:

• derivation proceeding
• non-institution
• rehearing
• patent challenge