What happens to a patent application once a derivation proceeding is instituted?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. Once a derivation proceeding is instituted, the Patent Trial and Appeal Board (PTAB) acquires exclusive jurisdiction over the involved patent application. As stated in MPEP 2313 : “The Board acquires jurisdiction over any involved file when the Board initiates a derivation proceeding. Other proceedings for the involved file within the Office are suspended except as the Board may order.” This means that normal examination procedures are suspended, and the examiner cannot take action on the application unless specifically authorized by the Board. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse PTAB Jurisdiction Over Derivation Proceeding MPEP 2313 Other Proceedings Suspended Except as Board Orders MPEP 2313 Permitted PTAB Has Jurisdiction Over Involved File During Derivation Proceeding MPEP 2313 PTAB Retains Derivation Proceeding Jurisdiction Until Termination MPEP 2313 PTAB Has Exclusive Authority Over Derivation Proceeding MPEP 2313 Permitted Examiner Must Not Act Without Board Authorization MPEP 2313 Prohibited PTAB Handles Requests for Interference and Derivation Records MPEP 103 Petitions for Access Handled by Office of Patent Legal Administration Except Interference Cases MPEP 103 Board Proceeding Record Public Availability After Final Action MPEP 103 PTAB Members Designated for Interference Proceedings Determining Priority and Patentability MPEP 1002.02(f) Other Related FAQs 5 FAQs Collapse No more FAQs How does a derivation proceeding affect other USPTO proceedings for the involved patent or application? Can an examiner continue to examine a patent application involved in a derivation proceeding? When does the PTAB&#8217;s jurisdiction over a patent applic...