Derivation Proceedings

The new AIA derivation proceedings are intended to replace the prior interference proceedings.  A derivation proceeding allows an applicant of a later-filed patent application to remove an earlier-filed patent application of a third party as prior art.  The later-filed patent application must demonstrate that the third party derived the claimed subject matter of its earlier-filed patent application from the later-to-file applicant.  Generally, this requires a showing that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earlier application.  A derivation proceeding must be filed within the one-year period beginning on the date of first publication of a claim that is the same or substantially the same as the earlier application’s claim to the allegedly derived invention.

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