What is a derivation proceeding in patent law?
A derivation proceeding is a legal process used to determine the true inventor when there are competing claims to the same or substantially the same invention. According to MPEP 717.01(d), an applicant or patent owner may file a petition for a derivation proceeding when:
- A rejection is based on a U.S. patent or patent application publication naming another inventor
- The patent or application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention
- An affidavit or declaration contends that an inventor named in the U.S. patent or application publication derived the claimed invention from the inventor or joint inventor named in the applicant’s application or patent
The MPEP states: “See 37 CFR 1.130(c). Permitting two different applicants to each aver or declare that an inventor named in the other application derived the claimed invention without a derivation proceeding to resolve who the true inventor is could result in the Office issuing two patents containing patentably indistinct claims to two different parties.”
This process helps ensure that only one patent is issued for inventions that are identical or not patentably distinct from each other when different inventive entities are involved.
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