A derivation proceeding is a trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 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. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner's application. The procedure for derivation took effect on March 16, 2013.
- Change to Implement Derivation Proceedings (77 Fed. Reg. 56068, Sept. 11, 2012)
- Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
- Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
- Proposed Rule for Derivation Proceedings (77 Fed. Reg. 7028, February 10, 2012)
- Derivation Proceeding FAQs