What is derivation in the context of pre-AIA patent law?

In the context of pre-AIA patent law, derivation refers to a situation where the subject matter in a patent, application publication, or other publication is derived from the inventor’s or at least one joint inventor’s own invention. MPEP 715.01(c) explains:

When the unclaimed subject matter of a patent, application publication, or other publication is the inventor’s or at least one joint inventor’s own invention, a rejection, which is not a statutory bar, on that patent or publication may be removed by submission of evidence establishing the fact that the patentee, applicant of the published application, or author derived their knowledge of the relevant subject matter from the inventor or at least one joint inventor.

To overcome a rejection based on derivation, the inventor or joint inventor must show:

1. The relevant subject matter was derived from their work.
2. They made the invention upon which the relevant disclosure is based.

It’s important to note that this concept of derivation is distinct from ‘derivation proceedings’ in AIA (America Invents Act) law, which are discussed in MPEP § 2310 et seq.

To learn more:

• Derivation
• Pre-AIA
• Patent Law
• Prior Art