What happens if a derivation proceeding is not instituted?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.