2310 Derivation Proceedings [R-08.2017]

A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation proceedings are only applicable to applications for patent, and any patent issuing thereon that are subject to first-inventor-to-file provisions of the America Invents Act (AIA). An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding with the Board.