PTAB Derivation Proceeding

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.