When two inventors claim the same invention, the patent system must determine who has the right to the patent. Historically, this was resolved through interference proceedings under the first-to-invent system. With the passage of the America Invents Act (AIA) in 2011, the U.S. transitioned to a first-inventor-to-file system, replacing interference proceedings with derivation proceedings for applications subject to the AIA. Understanding both types of proceedings — and when each applies — is essential for inventors and patent practitioners alike. At PerspireIP, we guide clients through these complex disputes. This guide explains how patent interference and derivation proceedings work and what you need to know to protect your rights.
Patent Interference Proceedings: The Pre-AIA System
Before March 16, 2013 (the effective date of the AIA’s first-inventor-to-file provisions), the United States operated under a first-to-invent system. Under this system, when two patent applications claimed the same invention, a proceeding called an interference was conducted to determine which inventor had the right to a patent. Interference proceedings were conducted before the Board of Patent Appeals and Interferences (now the PTAB) and could result in extensive fact-finding about the dates of conception, reduction to practice, and diligence of each party’s inventors.
Although the AIA eliminated interference proceedings for most applications, they remain relevant today for applications and patents subject to pre-AIA law — specifically, applications with at least one claim that has an effective filing date before March 16, 2013. The USPTO can still declare an interference between such applications, and existing patents and applications from this era may still face interference challenges.
Patent Derivation Proceedings: The AIA System
Under the AIA’s first-inventor-to-file system, the patent goes to the first inventor to file — not necessarily the first to invent. This makes filing date paramount and eliminates most disputes about who invented first. However, one scenario the AIA addressed is derivation: when a later-filed patent application was derived from the true inventor’s work without authorization. A patent derivation proceeding is a mechanism for the true inventor to challenge a patent or application that was improperly derived from their invention.
A derivation proceeding is instituted by the PTAB when a petitioner (typically the true inventor or their assignee) demonstrates that the claimed invention in the earlier-filed application was derived from the petitioner’s inventive work and that the petitioner filed their application within 1 year of the publication of the earlier application. The proceeding determines whether the named inventor in the earlier application actually derived the invention from the petitioner.
Key Differences Between Interference and Derivation Proceedings
Understanding the distinction between interference and patent derivation proceedings is important for assessing your options in a priority dispute.
- Interference applies to pre-AIA applications and determines which of two parties was the first to invent a claimed invention.
- Derivation applies to AIA applications and determines whether an earlier filer derived the claimed invention from a later filer (the true inventor).
- In interference, either party can prevail by proving they invented first; in derivation, only the true inventor (the party claiming derivation) can prevail by proving the other party copied their work.
- Derivation proceedings require proof of prior conception by the petitioner and communication of that conception to the respondent before the respondent’s filing date.
When to Consider a Derivation Proceeding
A patent derivation proceeding may be appropriate when you have evidence that a competitor’s patent application claims an invention that originated with you. Common scenarios include situations where a former employee, contractor, or collaborator files a patent application on an invention they learned from you in the course of a confidential relationship. Another scenario is when a company patents technology that was shared in confidence during merger discussions, licensing negotiations, or vendor relationships. Derivation proceedings are powerful but require strong evidence — you must be able to demonstrate both that you conceived the invention before the respondent and that you communicated that conception to the respondent.
Protecting Against Derivation Claims
To protect against derivation claims against your own patents, it is essential to maintain rigorous invention disclosure and documentation practices. Keep dated records of all invention disclosures, research notes, prototypes, and communications. Use formal invention disclosure forms that are signed and dated by all inventors. When sharing confidential information with others, use confidentiality agreements that clearly establish the source of the disclosed technology. These practices are not only good IP hygiene — they are critical evidence if you ever face a derivation challenge.
The PTAB Derivation Proceeding Process
A derivation proceeding before the PTAB is a complex, adversarial proceeding with specific procedural requirements. The petitioner must file a petition within 1 year of the publication of the earlier application, setting out the evidence of derivation with supporting declarations and exhibits. The PTAB evaluates whether the petition demonstrates that derivation is reasonably likely. If instituted, the proceeding involves document discovery, depositions, expert testimony, and trial briefs before the PTAB issues a final written decision. Parties may appeal PTAB decisions to the Federal Circuit.
How PerspireIP Can Help
Whether you are asserting a derivation claim against an applicant who has appropriated your invention, or defending your application against a derivation petition, PerspireIP provides experienced counsel in patent derivation proceedings and interference matters. Our attorneys understand both the substantive law and the complex procedural rules governing these proceedings, and we develop aggressive, evidence-based strategies to protect our clients’ inventorship rights.
Conclusion
Patent interference and derivation proceedings address some of the most complex and consequential disputes in patent law — disputes over who truly invented the claimed technology. Understanding when these proceedings apply and how they work is essential for protecting your IP rights. If you believe a competitor has filed a patent on your invention, or if you are facing a challenge to your inventorship, PerspireIP is here to help. Contact us today for an assessment of your situation.