Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 12 SEPTEMBER 2025

Federal Circuit's First Foray Into AIA-Derivation Proceedings

K&L Gates
K&L Gates
Contributor
K&L Gates

K&L Gates

The Firm K&L Gates is an integrated, international law firm. As a single global law firm, truly...

View firm profile
Explore more from K&L Gates

The Federal Circuit recently issued its first review of a derivation proceeding, a rarely used proceeding provided for by the America Invents Act (AIA).

United StatesIntellectual Property
Jason Engel
Jason Engel
Erik Halverson
Erik Halverson
Joshua Andrews
Joshua Andrews

The Federal Circuit recently issued its first review of a derivation proceeding, a rarely used proceeding provided for by the America Invents Act (AIA).

In this case, two entities, Global Health Solutions LLC (GHS) and Marc Selner, each filed patent applications for a method of preparing a wound treatment ointment. GHS alleged that Selner derived his patent application from Bradley Burnam, the inventor listed on GHS's application. The PTAB found that Mr. Selner independently conceived of the invention before Burnam communicated it to him.

The Federal Circuit's decision underscores the nuances of AIA derivation proceedings, which differ significantly from pre-AIA interference proceedings. Under the AIA, the focus is not on who was the first to invent but rather on whether the first filer derived the invention from another inventor. In this case, the court found that Selner had independently conceived the invention before any communication from Burnam, thus

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

California Expands Sales And Use Tax To SaaS And Certain Digital Products Starting 1 January 2027

California is implementing a major tax policy shift that will subject software-as-a-service, remotely accessed software, and digital products to sales and use tax beginning January 1, 2027. The California Department of Tax and Fee Administration has proposed emergency regulations establishing sourcing rules, a $5 million threshold that shifts tax liability from retailers to purchasers, and key exemptions for custom software and certain service-based digital products.
United StatesTax
K&L Gates
K&L Gates
Article

Text-Message Marketing In Texas, One Year After SB 140

Texas Senate Bill 140 (SB 140) took effect 1 September 2025, and applies to conduct occurring on or after that date. The bill amended Section 302 of the Texas Business and Commerce Code to extend registration and disclosure requirements to text messages by expanding the definition of “Telephone solicitation,” which previously applied only to a “telephone call,” to include certain transmissions of text or graphic messages and images. In addition, SB 140 added a definition of “Telephone call” that incorporates the definition found in Section 304, which includes certain text or graphic messages and images, but excludes certain agreed-to transmissions.
United StatesMedia, Telecoms, IT, Entertainment
K&L Gates
K&L Gates
Article

China’s A-Share Market Expands Closing-Price Trading: Implications For Funds And Institutional Investors

China's stock exchanges have implemented three major trading rule changes effective July 6, 2026, designed to enhance market quality and align practices with international standards. The reforms expand after-hours trading, modify public fund pricing mechanisms, and adjust price limits for risk-warning stocks. How will these structural changes impact institutional investors, ETF efficiency, and overall market participation in China's evolving capital markets?
ChinaFinance and Banking
K&L Gates
K&L Gates
Article

SEC And CFTC Open Door To Tokenized Markets After Clarity Fails To Advance

The SEC and CFTC have issued coordinated regulatory relief measures that significantly advance crypto-based trading infrastructure in US markets, bypassing Congressional gridlock on the CLARITY Act. These orders establish new frameworks for tokenized securities venues and passive software providers, potentially reshaping how digital assets are traded and accessed in regulated markets.
United StatesFinance and Banking
K&L Gates
K&L Gates
Article

Venezuela's Reopening: Investment, Infrastructure, And Technology Opportunities In A Rebuilding Latin America

Venezuela's post-Maduro reopening is creating unprecedented opportunities for foreign investors across energy, mining, telecommunications, and infrastructure sectors. With expanding OFAC sanctions relief, landmark legislative reforms, and major US companies nearing multibillion-dollar deals, the country presents investment prospects not seen in a generation—though success requires disciplined navigation of corruption, security, and regulatory risks.
United StatesInternational Law
K&L Gates
K&L Gates
Article

EU AI Act: Final Guidelines On Transparency Obligations Under Article 50

The European Commission has issued guidelines on transparency obligations under Article 50 of the EU AI Act, clarifying how providers and deployers must inform individuals when they interact with AI systems or are exposed to AI-generated content. These non-binding guidelines address a wide range of AI applications, from chatbots to deepfake technologies, and establish four main transparency scenarios with specific disclosure requirements that businesses must now prepare to implement.
European UnionGovernment, Public Sector
K&L Gates
K&L Gates