Not your mother’s calculus: PATENT derivation proceeding

In March 2013 the United States law transforms so that the first person to file a patent application is entitled to the patent and not necessarily the true inventor. Not every person who files first will be the true inventor, because this person may misappropriate the invention and filed the application first (hence the term ‘derivation’). For example, after the true inventor displays his new product to a potential distributor or manufacturer either of these third parties may file the application and leave the true inventor in the lurch.

The new law’s remedy for this situation is a derivation proceeding that is administered by patent office judges. To initiate the process the true inventor (later filer) must file his or her own patent application disclosing and claiming substantially the same invention. Within one year of official publication of the earliest application the later filer must next file a petition (and a mandatory government fee) to initiate a derivation proceeding. This derivation proceeding is very much structured to resemble a trial in a courtroom setting. However to allow this trial to proceed, the judges must decide whether the petition initially indicates that the earlier filer has indeed misappropriated the invention in the patenting process.

The petitioner must accurately designate the portion of his or her later filed application that claims rights to the invention. He or she must also describe the corresponding portion of the earlier filed application that claims rights to the same invention. In particular, the petitioner must explain how and why the technical description from each application describes substantially the same invention. There must also be at least one affidavit that describes how the earlier filer obtained the information for the earlier separate application.

Related to this affidavit is a detailed explanation of exactly how information about the invention came into possession of the earlier filing applicant. In addition to the affidavit there must be independent evidence of misappropriation, although the patent office does not designate specific documents or other means for this requirement. Even if the petition meets their expectations, the patent office judges may defer a derivation proceeding until (i) termination of proceeding for the earlier filed application, or (ii) under other circumstances specified by the new law.

To financially invest in this petition and trial is a huge undertaking. Is there any (cost-effective) manner in which to overcome this new hurdle to patenting so early in the process? Under current law many of my clients would first sell their new products to determine the market strength. Thereafter they would only invest in the United States patenting process if there was sufficient consumer demand for the product/invention. Under the new law this business strategy is extremely risky: Any exposure to third persons not only potentially affects the filing deadline but exposure also increases the possibility that an imposter will file a patent application. In my professional opinion, the best strategy is to absolutely refrain from disclosing the invention, or even an early prototype, to any third parties.

This recommend is even true for inventors and business persons who routinely implement non-disclosure and non-compete agreements to retain product developers and designers as well as to attract potential investors. The reason? These agreements only provide a contract remedy in a local courthouse if a third person who participated in the agreements inappropriately produces or sells the invention. There is nothing to prevent this a third person from filing an application, and thereby automatically becoming the presumed owner of a resulting patent. Unfortunately, to present evidence of a non-disclosure non-compete agreement requires a derivation proceeding in the patent office. However, this proceeding is a separate fact finding process that is unrelated to a contract dispute, and which many businesspeople are financially unable or unwilling to undergo.

©2012 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse advertisements at


2 Responses to Not your mother’s calculus: PATENT derivation proceeding

  1. Very interesting. Simply curiosity here, are applications currently submitted before the change effected by this ruling? It would seem to provide significant addition protection of the patent holder over a challenger. And if a patent holder were to make clarifications (from broad to narrow interpretation of claims) would that extend the patent life and strengthen the patent holder’s position?

    Anyway it is food for thought. thanks so much for your blogs. They are helpful in lay understanding of this area of the law.

    • Dear Mr. Swengler:

      Under the appropriate circumstances a patent owner may request claim changes from broad to narrower or vice versa, through separate patent office proceedings.

      That portion of the law that implements ‘first inventor to file’ becomes effective in March 2013. Whether this changes affects currently filed applications depends upon future interpretation, although generally such changes are not retroactive. However, many patents that were originally legitimate under previous law were thereafter found invalid by the U.S. Supreme Court in a relatively recent case. Because of these unforeseen developments, I advise my clients to proceed as if the new law is already in effect.

      I hope that this note answers your questions. Thank you for your readership and your kind comments on my behalf.


      Adrienne B. Naumann, Esq.

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