The Leahy-Smith America Invents Act of 2011 (“AIA”) was signed into law by President Obama on September 16, 2011. The first significant overhaul of the U.S. patent system in nearly 60 years, this new patent reform measure ushers in considerable changes in how companies and individuals may obtain and enforce patents in the United States. This is the fourth in a series of articles on the AIA (the earlier articles can be accessed here). This article describes the new derivation proceedings that will replace the current interference practice when the “first-inventor-to-file” provisions are implemented on March 16, 2013.

As discussed in an earlier article in this series, the AIA will change the U.S. Patent system from a first-to-invent to a first-inventor-to-file system. Under the first-inventor-to-file regime, interference proceedings will no longer be necessary. However, since the first-to-file system will not come into effect until March 16, 2013, interference proceedings will stay in effect for all applications filed before March 16, 2013.

Pre-AIA, § 102(f) allowed a person to obtain a patent unless “he did not himself invent the subject matter sought to be patented,” i.e., if he derived the invention from another. Proceedings to assess whether an invention was derived from another, i.e., derivation proceedings, will be available under the AIA beginning on March 16, 2013. In order to initiate such a derivation proceeding, an “applicant for patent” will have to file a petition within one year of the publication of a claim that is the same or substantially the same as a claim in an earlier application, thus imposing an obligation to monitor publication databases for any possibly derived patent applications. The petition will have to be made under oath and be supported by substantial evidence. Notably, the AIA does not provide for discovery (or impose any obligations to provide evidence) as is the case under the current interference provisions. The petition will be granted or denied by the Director, and the decision whether or not to grant the petition is not appealable.

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