Patents, first to file, first to invent, and derivation proceedings!

The America Invents Act or the AIA changed our patent filing system from a First to Invent to a First to File system.  However, it also introduced derivation proceedings into the United States Patent and Trademark Office (USPTO) or Patent Office process. This may still allow many First to Invent Applicants to establish superior patent rights by demostrating that that First to File Applicant derived his, her or its invention from the Second Applicant.

This concept is similar and analogous to a copyright holder’s right to derivative works.  However, it is unclear what the scope of these patent derivation proceedings will be.  In addition, will an applicant be able to create a presumption of derivation by showing reasonable access to his or her invention and substantial similarity?  How will this impact the policy of permitting improvement patents that are not anticipated and nonobvious?

Can all improvements to a patented invention be challenged in derivation proceedings? What impact will this have on granting pioneering inventions greater protection? Will Courts still allow a broader or greater scope of protection in interpreting the claims of a pioneering patent? Will the Patent Office also in effect give broader or greater rights to a pioneering inventor in derivation proceedings?

We will just have to wait and see how the Patent Office and Courts interpret the changes brought about by the AIA.  If you have any concerns or questions, then please contact us at

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