What must be included in a derivation proceeding petition?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
A petition for a derivation proceeding must contain specific information to be considered by the USPTO. According to MPEP 2310.01, which cites 35 U.S.C. 135(a)(1):
“The petition shall set forth with particularity the basis for finding that an individual named in an earlier application as the inventor or a joint inventor derived such invention from an individual named in the petitioner’s application as the inventor or a joint inventor and, without authorization, the earlier application claiming such invention was filed.”
In simpler terms, your petition must:
- Clearly identify the invention in question
- Name the individual(s) in the earlier application who allegedly derived the invention
- Explain how the invention was derived from the petitioner’s inventor
- Provide evidence that the earlier application was filed without authorization
- Include any other relevant details to support the claim of derivation
It’s crucial to provide sufficient evidence and details to meet the standards for instituting a derivation proceeding.