The U.S. Patent and Trademark Office recently published final rules governing derivation proceedings. The new patent proceedings are designed to ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent once the new first-inventor-to-file system launches.
Under the final rules, if a dispute arises as to which of two applicants is a true inventor (as opposed to who invented it first), it will be resolved through a derivation proceeding conducted by the USPTO’s Patent Trial and Appeal Board. The petition must state with particularity the basis for finding that a named inventor in the earlier application derived the claimed invention without authorization. The petition must also be filed within one year of the publication of the earlier application.
The final rules also allow the parties to resolve disputes outside of the USPTO. For example, the final rules provide that the parties to a derivation proceeding may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Parties may also elect to resolve the dispute through arbitration, although an arbitration award does not preclude the USPTO from determining the patentability of the claimed inventions involved in the proceeding.
Although the final rule was published this month, derivation proceedings will not take effect until March 16, 2013. The USPTO has indicated that it wanted to release the rules well in advance so that the patent community would have ample time to prepare.
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