Patent Proceedings

Derivation Proceedings

The AIA procedure for proving an inventor stole your conception — narrower and rarer than the pre-AIA interference it replaced.

What is a derivation proceeding and when does it apply?

Derivation proceedings are a narrow PTAB proceeding with specific applicability requirements.

Statutory Basis

35 U.S.C. § 135
Created by the Leahy-Smith America Invents Act (AIA, 2011)
Effective for applications with an earliest effective filing date on or after March 16, 2013

What it is. An administrative proceeding before PTAB to determine whether a named inventor of a patent or application derived the claimed invention from a named inventor of a competing application

What 'Derivation' Means

Derivation occurs when one person takes another person's complete conception of an invention and files a patent application on that invention without authorization
The petitioner is claiming: 'I conceived the invention first
The respondent learned it from me and filed without my permission'

When it Applies — AIA Context

The AIA changed the US patent system from first-to-invent to first-inventor-to-file
In the new system, the first person to FILE wins (with some exceptions)
Derivation proceedings address the specific situation where the first filer is not the true inventor but instead derived the invention from the true inventor

Pre-aia Analog — Patent Interference

Pre-AIA § 135 provided for patent interferences to determine who was the first-to-invent
Interference proceedings compared two competing claims and determined priority of invention based on conception and reduction to practice dates
Derivation is NARROWER than interference: interference resolved all priority disputes
Derivation resolves ONLY the specific claim that one inventor stole the invention from another

Practical Rarity

Derivation proceedings are very rare
The more common scenario under AIA is: true inventor files first → no derivation issue
True inventor files second → they lost on priority (AIA first-to-file) unless derivation occurred
Derivation is hard to prove and limited to the theft/misappropriation scenario.

What are the elements required to prove derivation?

Derivation requires proving three specific elements clearly and convincingly.

Element 1 — Complete Conception by Petitioner. The petitioner's named inventor must have conceived of a complete and operative invention

Conception

'the formation in the mind of the inventor of a definite and permanent idea of the complete operative invention' (Burroughs Wellcome)
The conception must be of the subject matter claimed in the respondent's application or patent
The invention must be complete — not just a general idea or research direction

Element 2 — Communication of the Complete Conception

The petitioner's inventor must have communicated the complete conception to a named inventor of the respondent's application
The communication must be corroborated by evidence beyond the inventor's own testimony (rule against self-serving testimony)

What Counts as Communication

Email with technical details
Written documents shared
Conversations with witnesses who can corroborate
Shared code or prototypes
Lab notebooks with witness signatures
Meeting notes
Presentations

Timing. The communication must predate the respondent's conception (or at least predate the respondent's filing date)

Element 3 — Filing by Respondent without Authorization

The respondent filed an application on the derived invention without the authorization of the petitioner
The respondent is not entitled to a patent on an invention they took from the petitioner

Standard of Proof. Petitioner must prove derivation by a PREPONDERANCE OF THE EVIDENCE

Supporting Evidence

Corroboration is critical for all elements
The stronger the corroboration, the more persuasive the case
Lab notebooks
Emails
Technical documents
Witness declarations all serve as corroboration

Claim Mapping. Petitioner must show that the respondent's claims correspond to the petitioner's conception — claim charts help establish this.

What are the filing requirements and timing rules for a derivation petition?

Derivation petitions have strict timing and procedural requirements.

Filing Deadline

35 U.S.C. § 135(a): petition must be filed within ONE YEAR from the date of the first publication of a claim 'to an invention that is the same or substantially the same as the earlier application's claim'
The triggering event is the PUBLICATION of the respondent's application — not its filing

What Counts as Publication

Publication of the application itself (18-month publication under § 122)
Grant of a patent
Publication of an issued patent
Once the respondent's claim is published, the 1-year clock starts

Filing with PTAB. The petition is filed with PTAB under 37 C.F.R. Part 42, Subpart E (Derivation Proceedings)

Petition Contents

Identify the applications/patents at issue
State the basis for the derivation claim
Include claim charts showing the claims are directed to the same invention
Include supporting evidence
Include a declaration from the petitioner's inventor(s)

Claim Correspondence. The petitioner must show that there is at least one claim in respondent's application that 'corresponds to' a claim in petitioner's application — i.e., the claims are directed to the same or substantially the same invention

Filing Fee

$400 (small entity)
$200 (micro entity)

Preliminary Conference. PTAB reviews the petition and may hold a preliminary conference to determine if the proceeding should be instituted

Institution Threshold. PTAB institutes the proceeding only if the petition demonstrates a reasonable likelihood that the derivation claim will succeed — the claim chart and evidence must make a threshold showing

Separate from District Court

A derivation proceeding does not prevent the petitioner from filing a civil action — § 135(b) allows a civil action for derivation in district court
The civil action must also be brought within one year of publication.

How is a derivation proceeding different from a pre-AIA patent interference?

Derivation and interference are related but fundamentally different proceedings: PRE-AIA PATENT INTERFERENCE (§ 102(g)).

System. First-to-invent

Trigger. Two applications or an application and an existing patent claiming the same patentable invention

Purpose. Determine which party invented the invention FIRST

Standard

Priority of invention = conception + reduction to practice (actual or constructive)
Parties could 'swear back' prior art by proving earlier conception + diligence

Count. The central disputed patentable subject matter

Outcome

Priority awarded to the first-to-invent
The losing party's claims canceled or awarded to the winner

Common in

1980s-2000s
Technology races (biotech; semiconductors; software)

Broader Scope. Interference resolved ANY priority dispute between parties — even when both invented independently

AIA Derivation (§ 135)

System. First-inventor-to-file

Trigger. Competing claims to the same invention where petitioner claims respondent derived the invention from petitioner

Purpose. Determine whether DERIVATION (theft/misappropriation) occurred — NOT who invented first in the abstract

Standard

Petitioner must prove complete conception + communication + unauthorized filing (a higher bar than mere priority)
CANNOT resolve mere 'who invented first' disputes — if two parties independently invented, the first to file wins and there is no derivation

Much Narrower. Derivation is ONLY for the theft scenario, not for legitimate independent invention races

Very Rare

Pre-AIA interferences were relatively common (thousands per year)
AIA derivation proceedings are extremely rare (fewer than 100 per year) because the first-to-file system resolves most priority disputes without PTAB

Transition Rules

Interference proceedings still apply to applications/patents with a pre-March 16, 2013 effective filing date
Derivation applies to applications filed on or after March 16, 2013.

What remedies are available in a derivation proceeding?

Derivation proceedings can result in significant remedies affecting patent ownership.

PTAB Remedies

Award of Patent to Petitioner. If PTAB finds derivation, it can order that the derived claims be canceled from the respondent's patent or application and allowed to proceed to grant in the petitioner's application

Judgment of Unpatentability. PTAB can enter judgment that the respondent is not entitled to the claims at issue

Cancellation

The respondent's claims that correspond to the petitioner's invention can be canceled
CIVIL ACTION ALTERNATIVE (§ 135(b)): within one year of publication of the respondent's claims, the petitioner may file a civil action in district court instead of or in addition to a PTAB derivation proceeding
The district court can also award the patent to the correct inventor
The district court action and PTAB proceeding can run concurrently (though courts may stay the civil action pending PTAB)

Limitations

Derivation cannot result in BROADENING the petitioner's claims — only the claims that correspond to petitioner's conception can be awarded
Derivation does not affect unrelated claims in the respondent's patent

Practical Challenge

Even winning a derivation proceeding can be expensive and slow
By the time the proceeding concludes, the derived invention may have been on the market for years

Prevention

Document conception carefully (lab notebooks with dated, witnessed entries)
Use NDAs before discussing inventions with potential partners
Be careful about what is disclosed before filing a patent application
File quickly after completing conception to minimize the window for derivation

Inventor Declarations

All inventor declarations filed with USPTO certify that the named inventor is the true inventor
A false declaration = inequitable conduct
Derivation proceedings can expose false declarations.