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ARTICLE · 28 MARCH 2018

PTAB Institutes Its First Derivation Proceeding

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On March 21, 2018, the PTAB instituted its first derivation proceeding under 37 C.F.R. § 42.400 et seq., having denied many petitions over the years.

United StatesIntellectual Property
Anthony Hartmann
Anthony Hartmann
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On March 21, 2018, the PTAB instituted its first derivation proceeding under 37 C.F.R. § 42.400 et seq., having denied many petitions over the years.  Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 (Paper 32).  The claims were directed to spacer frame assemblies for windows.

The Leahy-Smith America Invents Act has replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013.  The purpose of a derivation proceeding is to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and whether the earlier application claiming such invention was filed without authorization.  See 35 U.S.C. § 135(a)(1); 37 C.F.R. § 42.405(b)(2).

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