Derivation proceedings were created to ensure that the first person to file an application is actually a true inventor of the subject matter claimed in the application. They ensure that a person will not be able to obtain a patent for an invention that he did not actually invent. If a dispute arises as to which of the two applicants is a true inventor, it will be resolved through a derivation proceeding conducted by the Board.

A derivation proceeding is a new trial proceeding conducted at the Board to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and the earlier application claiming such invention was filed without authorization.

An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

There are a few criteria for the petition for a derivation proceeding.

These include that the petitioner must have at least one claim that is the same or very close to the same as the invention disclosed to the respondent.  The petition must also show that the inventor of the later filed claimed invention did not authorize the filing of the earlier application claiming the invention.  Lastly the petition must show why the later filed claimed invention is the same or substantially the same as the invention disclosed to the respondent.

The procedure for derivation proceedings took effect on March 16, 2013.