When a collaboration goes wrong: A look at rare derivation proceedings before the PTAB

When inventors collaborate with non-inventors to make and/or market an invention, sometimes a non-inventor seeks to patent the invention before the inventor.

If you as an inventor find yourself in this situation, what can you do?

The USPTO offers a proceeding that, in limited circumstances, allows an inventor to prove that his or her idea was taken by a non-inventor seeking a patent. This is called a derivation proceeding.

The term “derivation” means obtaining or developing something from a source of origin. Hence, in the patent context, it refers to the notion of a non-inventor seeking to patent an inventor’s idea.

If you think your invention may have been taken by a non-inventor and is the subject of the claims of either a patent application filed by the non-inventor and pending at the USPTO—or a patent issued to the non-inventor—there are some steps you can take.

First, you must have a pending patent application of your own. If you do, you may file a petition at the Patent Trial and Appeal Board (PTAB).

There is a time constraint for filing. You must file the petition within one year of the publication of the other party’s application that contains claims to your invention, or patent issuance covering your invention—whichever is earlier.

In your petition, you must provide sufficient evidence establishing that you conceived the invention first and had some communication about the conceived invention with the non-inventor. You must also provide sufficient evidence that the non-inventor did not have your permission to file the application.

The PTAB determines whether the non-inventor derived the invention from you, and whether the non-inventor was authorized to file his or her own application.

If you are successful in proving derivation by a preponderance of the evidence, the PTAB may cancel issued patent claims or finally refuse claims of an application that cover the derived subject matter. Under appropriate circumstances, the PTAB also may correct inventorship of any application or patent at issue in a derivation proceeding.

Derivation proceedings before the PTAB are rare. Nevertheless, an inventor should keep adequate contemporaneous records of when you conceived your invention and to whom you may have communicated information about your invention. Such records are vital to establishing derivation, if necessary.

For more information about derivation proceedings, go to Chapter 2310 of the Manual of Patent Examination Procedure.