First PTAB Decisions In Derivation Proceedings

The America Invents Act ("AIA") eliminated interference proceedings for applications having a claim with an effective filing date on or after March 16, 2013, and created derivation proceedings for those applications. A derivation proceeding is a trial proceeding conducted at the Patent Trial and Appeal Board ("PTAB") to ensure that the first person to file a patent application is actually the true inventor of the claimed subject matter.

Derivation Proceedings Generally

In a derivation proceeding, the PTAB determines (i) whether an inventor named in an earlier-filed application derived the claimed invention from an inventor named in the petitioner's application, and (ii) whether the earlier application claiming such invention was filed without authorization. Accordingly, only an applicant for a patent may file a petition for a derivation proceeding. The petition must be filed within one year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention. Notably, the determination of whether to institute a derivation proceeding is final and nonappealable. 35 U.S.C. § 135(a). The petition must set forth with particularity the basis for finding that an inventor named in an earlier-filed application derived the claimed invention from the petitioner and must be supported by substantial evidence. A showing of derivation requires "both (1) prior conception of the invention by another and (2) communication of that conception to the patentee that is 'sufficient to enable him to construct and successfully operate the invention.'" Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). In addition, the petitioner must identify which application or patent is disputed and provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier-filed application.

First PTAB Decisions in Derivation Proceedings

To date,1 six derivation petitions have been filed with the PTAB. Of those, three have been denied, see Catapult Innovations PTY Ltd. v. adidas AG, DER2014-00002, DER2014-00005, DER2014-00006 (July 18, 2014), 2and the other three are still pending.3 The PTAB denied Catapult's petitions to institute derivation proceedings directed to three of adidas AG's patent applications. In these decisions, the...