What is the primary purpose of a derivation proceeding?
The primary purpose of a derivation proceeding is to determine the true inventor of a claimed invention when there is a dispute between two patent applications. This is outlined in MPEP 2310.01, which cites 35 U.S.C. 135(b):
“In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.”
The key aspects of a derivation proceeding include:
- Determining if the invention in the earlier application was derived from the petitioner’s inventor
- Assessing whether the earlier application was filed without proper authorization
- Ensuring that the patent is granted to the rightful inventor
- Resolving disputes over inventorship between competing patent applications
By providing this mechanism, the patent system aims to protect the rights of true inventors and maintain the integrity of the patent process.
To learn more: