A Sighting Of AIA Derivation

Before the American Invents Act, the U.S. had a "first-to-invent" patent system. That system included provisions for resolving disputes concerning who was the first to invent, called "interferences," and took place both before the USPTO and the courts (pre-AIA §135 and §291). Interferences between parties who collaborated or otherwise shared communications often involved issues of first-to-invent, i.e., priority and derivation. Priority and derivation are alternative theories, however, as one who derives an invention is neither a first nor a second inventor; he is a noninventor. Derivation has been a recognized issue in interferences, as well as a ground for invalidating a patent in court or rejecting a claim during prosecution (pre-AIA §102(f)).¹