What must a petition for a derivation proceeding provide?
In a petition for a derivation proceeding, the petitioner must:
- (i) identify which application or patent is disputed; and
- (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.
The answer to this question can be found in the PTO supplement known as, “Derivation Proceeding Final Rules”. This supplement covers derivation proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
This question and answer comes from the PTO Supplement titled Derivation Proceeding Final Rules.
The following is a brief summary of this supplement:
The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board).
The changes in this final rule take effect on March 16, 2013.