If the new law requires that the first inventor to file an application owns a patent, what happens if the first ‘inventor’ to file is not actually the inventor, but instead ‘derived’ the invention from a bona fide inventor? In other words, what if the person who is first to file stole the invention from a true inventor?
Let’s back up and understand what the law was previously. Under the old law, if two purported inventors filed applications for the same invention within the same year, a proceeding known as interference determined the first true inventor. This was a lengthy, complex and expensive administrative proceeding in the patent office with its own procedures and evidentiary rules. Because of its unique nature and procedures, interferences became its own specialty among many patent attorneys.
Under the new law, interferences are no longer necessary because there is no need to determine who was first to invent. However, there is now a need to determine whether someone fraudulently claimed inventorship, and so there is now an administrative option newly designated as a derivative proceeding in the patent office. This procedure is entirety new to U.S. patent law and it is intended to ‘assist’ true inventors in ‘flushing out’ fraudulent first filers.
So, does this new proceeding benefit businesses? Here are its requirements and you be the judge. First, the purported rightful inventor must file a petition and allege in considerable detail, that the first to file ‘inventor” misappropriated the invention. The petition must be filed within one year of the first publication of the application claiming the identical or similar invention of the rightful inventor. Evidence must be appended to the petition that strongly supports the contention that the invention of the earlier filed application was stolen. The patent office reviews the petition with evidence and decides whether a derivation proceeding is appropriate. After you spend time and money for the attorney to prepare the papers, the patent office may nevertheless deny the petition. Unfortunately, this decision cannot be appealed.
Suppose you as the bona fide inventor convince the patent office to authorize the derivation proceeding. The proceeding is managed and resolved by the Patent Trial and Appeal Board (PTAB). This is the same Board of administrative judges that initially hears appeals from the decisions of patent examiners. The actual procedural details require detailed regulations pursuant to this new statute, and which will be announced to the public in due course.
Business people should also understand that the PTAB may postpone the allowance of a petition until three months after the alleged fraudulent application becomes a patent. Moreover, the PTAB may defer the decision on a petition, or postpone the conclusion of an on-going derivation proceeding, until other patent office examinations of the allegedly fraudulent patent are concluded.
My recommendation for fending off this potentially disastrous event is the same as for the previous discussed challenges of the new law: very limited disclosure and quick filing of your own patent application to avoid prohibitive costs of derivation proceedings. In addition, you must now be especially alert for theft by former employees as well as competitors who somehow accessed your technology. Finally, keep in mind that documentation of your invention, persons with access to it, and confidentiality of invention development is more crucial than ever.
© 2011 Adrienne B. Naumann
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