PTAB Issues First Derivation Proceeding Decision

The America Invents Act of 2011 (“AIA”) made a fundamental change in U.S. patent practice: prior law awarded patent rights to the “first to invent,” while the AIA changed that to the “first to invent and file.”

Now, someone who independently invents something after someone else, but files first get the patent rights.

To avoid someone taking someone else’s invention as his own, the AIA created a little-known procedure called a Derivation Proceeding. If someone can show (a) that he conceived of the invention first; (b) that he communicated the invention to one of the inventors of the first-filed patent prior to its filing; and (c) that the first-filed patent was filed without his authorization, then that person will be deemed the true “inventor” and own the patent rights. Such proceedings must be instituted within one year of the patent application being published.

The PTAB issued its first final decision in such a proceeding. Andersen Corp. v. GED Integrated Solutions, Inc. (PTAB 2019). The decision provides some valuable lessons for would be patent owners to navigate the new AIA regime, which include (a) act quickly and diligently to file a patent application; (b) document both inventions and any communications about them meticulously; and (c) monitor competitor patents filings.

Andersen and GED are competitors in the window business. In 2015, GED filed a patent (which eventually issued) directed to “a spacer frame and fabrication process for use with an insulating glass window.” The patent is directed to a window structure (and related method of manufacture) for glass windows that avoids infiltration by atmospheric vapor during use, which negatively affects their insulative qualities. The invention is assertedly useful in avoiding these problems.

Andersen asserted that its own research employee had invented the concept first, and that he had communicated the heart of the invention to one of the inventors on the GED patent.

After a year of proceedings, the PTAB issued its decision in which it held that (a) Andersen had shown that it had conceived of the invention first but (b) it failed to show that its inventor had communicated the invention to the inventor of GED’s patent before it filed its patent. So, Andersen lost.

This first PTAB decision of its type teaches some important lessons for would-be patent owners:

Detailed Documentation Is Essential

The two elements of any derivation proceeding are (1) prior conception and (2) communication of the invention. Critically, both must be proven by “corroborating evidence,” generally documentation showing each step is required; the PTAB will simply not take the challenging inventor’s word for it.

And this documentation must be detailed. Proof of conception must “encompass all limitations of the disclosed invention.” Similarly, the communication must be “sufficient to enable one of ordinary skill in the art to make the patented invention.”

The latter is where Andersen’s case faltered. The inventor had shown a prototype, but that was not enough to undersand or practice the invention, and the implicit understanding from the prototype and accompanying discussion was deemed insufficient to have conveyed the invention.

So detailed records of what has been conceived and, where applicable, what might be communicated to outsiders is critical.

Usually, of course, inventors (and their employers) are reluctant to make any disclosure of as-yet unpatented technology. But if there is outside discussion or collaboration, rigorous documentation may be needed to later prove misappropriation.

Act Quickly to File

This is an obvious corollary of the AIA’s shift to a first-inventor-to-file rule. In the Andersen decision, Andersen claimed that its inventor conceived of the invention in 2009, yet it did not file its own patent application until 2016. No explanation for that long delay was given. Prior to the AIA, that might not have mattered (so long as the invention was not on-sale), but now it clearly does.

Monitor Competitor Filings

As noted, the AIA imposes a one-year limitation on Derivation proceeding filings, measured from when a patent application is published. This can often be prior to the issuance of the competitors’ patents, since patent applications are presumptively published 18 months after filing.

Although passed in 2011, the full implications of the AIA’s shift to a first-inventor-to-file regime are only now being worked out by the courts and the Patent Office. Companies who operate repeatedly in the patent space need to monitor decisions like the Andersen decision and integrate the lessons they teach into their regular practice.