What is a derivation proceeding and how does it relate to improper naming of inventors?
A derivation proceeding is a legal process used to determine the true inventor(s) of a claimed invention when there is a dispute about inventorship. MPEP 2157 mentions derivation proceedings in the context of improper naming of inventors:
“A situation in which an application names a person who is not the actual inventor as the inventor will be handled in a derivation proceeding under 35 U.S.C. 135 (see MPEP §§ 2310 – 2315), by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115, as appropriate.“
Derivation proceedings are conducted by the Patent Trial and Appeal Board (PTAB) to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application. This process helps ensure that patents are granted to the true inventor(s) of the claimed subject matter.
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