Derivation Proceeding

A derivation proceeding is an administrative proceeding at the PTAB (Patent Trial and Appeal Board) under 35 U.S.C. § 135, enacted as part of the America Invents Act (AIA) in 2011 and effective for patent applications with an effective filing date on or after March 16, 2013. A derivation proceeding allows an inventor (the 'petitioner') who filed a patent application after another applicant (the 'respondent') to challenge the respondent's right to a patent by claiming that the respondent derived the claimed invention from the petitioner. The theory is: even under a first-inventor-to-file system, you must be an actual inventor to receive a patent. If you file first but only because you stole the invention from the true inventor, you are not entitled to the patent. To prevail, the petitioner must show: (1) the petitioner communicated the claimed invention to the respondent; (2) the respondent derived the invention from that communication (did not independently conceive it); and (3) at least one of the respondent's claims is directed to the same or substantially the same invention. Derivation proceedings replaced interference proceedings (35 U.S.C. § 135 pre-AIA) for applications governed by the AIA's first-inventor-to-file system. Interference proceedings are still available for applications with effective pre-AIA filing dates.

Derivation proceedings and interference proceedings address related but fundamentally different questions. Interference proceedings (pre-AIA, 35 U.S.C. § 135 old) were used under the first-to-invent system to determine which of two applicants (or an applicant and a patent holder) was the first to invent the same claimed invention. The first inventor wins — even if the other party filed first. Evidence of conception date, reduction to practice (actual or constructive), and diligence between conception and reduction were central. Derivation proceedings (AIA, 35 U.S.C. § 135 new) are used under the first-inventor-to-file system to determine whether the applicant who filed first actually derived the claimed invention from the applicant who filed second (and who is the true inventor). The question is not who invented first — under the AIA, the first to file wins — but whether the first-to-file applicant was an actual inventor or stole the invention. Evidence of communication is central. The systems are mutually exclusive by filing date: applications with an effective filing date on or after March 16, 2013 (AIA applications) are subject to derivation; applications with an effective pre-AIA filing date may still have interferences. A patent family can span both systems if it has claims with pre-AIA and post-AIA effective filing dates.

A derivation petition must be filed within 1 year from the date of first publication of a claim drawn to the same or substantially the same invention as the petitioner's claim. This is a strict statutory deadline (35 U.S.C. § 135(a)); the PTAB has no authority to extend it. The 1-year clock starts from the publication of the respondent's application (typically 18 months after filing), not from the grant date. This means that if a competitor's application publishes and you believe they derived your invention, you have 1 year from that publication date to file a petition — regardless of whether the competitor's patent has issued. You must also have a pending application with at least one claim directed to the same or substantially the same invention as the respondent's claim. Practical implication: monitor competitor applications actively (USPTO Patent Center, Google Patents, Derwent Innovation). If you have reason to believe derivation occurred — because you disclosed an invention to someone who later filed a patent application on it — set up alerts for the other party's application publications and track the 1-year deadline carefully.

Derivation proceedings are extremely rare. As of 2024, fewer than a dozen derivation proceedings have been instituted by the PTAB since the AIA became effective in 2013. By comparison, IPR petitions number in the thousands per year, and even interference proceedings under the pre-AIA system were relatively rare compared to normal patent prosecution. The rarity of derivation proceedings reflects several factors: (1) The AIA's first-inventor-to-file system means that the best protection against a competitor stealing your invention is to file first — and quickly. (2) Proving derivation requires evidence of actual communication of the specific claimed invention, which is difficult to assemble. (3) Most 'stolen invention' situations that would have previously been handled in an interference (where prior invention date could be proven) are now handled through litigation or negotiation because the AIA removed the priority-date advantage. (4) The strict 1-year deadline from publication catches many inventors off guard, requiring constant monitoring of competitor applications. In practice, inventors who believe a competitor derived their invention most often pursue: (a) filing a derivation petition if within the window and evidence exists; (b) seeking inventorship correction under 35 U.S.C. § 256 if joint inventorship is plausible; (c) pursuing misappropriation of trade secret or breach of confidentiality claims in district court.