What is the difference between a derivation proceeding and using 37 CFR 1.130 provisions?

The MPEP 717.01(d) outlines the key differences between a derivation proceeding and using the provisions of 37 CFR 1.130:

Derivation Proceeding:

• Used when there are competing claims to the same or substantially the same invention
• Resolves who the true inventor is when different inventive entities are involved
• Initiated by filing a petition pursuant to 37 CFR 42.401 et seq.
• Applicable when an affidavit or declaration contends that an inventor named in a U.S. patent or patent application publication derived the claimed invention

37 CFR 1.130 Provisions:

• Used to overcome certain prior art rejections
• Not available when dealing with patentably indistinct claims between different parties
• Can be used when the rejection is based on disclosures other than U.S. patents or patent application publications
• Available when the affidavit or declaration does not contend derivation but instead shows earlier public disclosure or invention

The MPEP states: “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 distinction ensures that the appropriate legal mechanism is used to resolve inventorship disputes and prevent improper issuance of multiple patents for the same invention.

To learn more:

• derivation proceeding
• 37 CFR 1.130
• patent law
• inventorship disputes

To learn more:

• 37 CFR 1.130