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ARTICLE · 15 JANUARY 2016

Derivation In 2015: Still No Instituted Proceedings

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The Leahy-Smith America Invents Act (AIA) replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013.

United StatesIntellectual Property
Anthony Hartmann
Anthony Hartmann
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The Leahy-Smith America Invents Act (AIA) replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013. While several petitions have been filed under 37 C.F.R. § 42.400 et seq., including two in 2015, to date not a single petition has led to an instituted derivation proceeding.

In November, the PTAB dismissed the petition in Estate of L. Gerber et al. v. Cornell Univ. et al., DER2015-00011 (November 9, 2015) (Paper 5) because Petitioners failed to "cite to a pending application which they have placed on file at the United States Patent and Trademark Office." Paper 5 at 2.  Petitioners had sought a "determination from the Director that they are the joint-inventors and/or joint-owners of the pending Patent assignment for [application 14/352,350]." Estate of Gerber et al. v. Cornell Univ. et al., DER2015-00011 (October 5, 2015) (Paper 1) at 1. In denying the petition, the

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