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ARTICLE · 25 APRIL 2022

Spotted: The Rare AIA Derivation Proceeding!

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Prior to the America Invents Act ("AIA"), inventorship disputes were resolved by interferences, which considered who was the first to invent and whether the invention was derived from another.

United StatesIntellectual Property
Barbara McCurdy
Barbara McCurdy
Shannon Patrick
Shannon Patrick
Amanda Murphy
Amanda Murphy
Stacy Lewis
Stacy Lewis
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Prior to the America Invents Act ("AIA"), inventorship disputes were resolved by interferences, which considered who was the first to invent and whether the invention was derived from another. Under the AIA, the U.S. shifted from a "first-to-invent" system to a "first-inventor-to-file" system. The issue of derivation, also referred to "originality," was preserved by the AIA in the form of derivation proceedings. Derivation proceedings under the AIA first-inventor-to-file system resolve inventorship disputes under 35 U.S.C. § 135. Any patent application containing a claim with an effective filing date on or after March 15, 2013,1is subject to the AIA derivation proceedings. The high evidentiary bar under AIA derivation proceedings and the low institution rate suggest that these proceedings require a strong presentation of evidence in the petition just to pass the institution stage.

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