© 2012-2013 by Stephen L. Keefe
The 2011 Leahy-Smith America Invents Act provides a derivation proceeding for later patent filers to challenge earlier patent filers, effective March 16, 2013. As Leahy-Smith transforms the U.S. patent system from a first-to-invent to a first-to-file system, the new derivation proceeding essentially replaces interference proceedings under the old law. Whereas the older interference proceeding allowed patent challengers to directly assert prior invention of a patented innovation under the first-to-invent regime, the new derivation proceeding allows a later filer to assert that an earlier filer actually derived an invention from the later filer, and filed a patent application without authorization based on the later filer's work. Like the predecessor interference proceedings, derivation proceedings could translate into expensive trial-like affairs before the Patent Trial and Appeal Board (PTAB), involving large amounts of evidence. Also, some patent commentators have already hinted that challengers may face an uphill battle in meeting the somewhat difficult evidentiary burden to show derivation, as few alleged derivers will likely leave much of a paper trail for challengers to use as evidence.
Tappan Zee Bridge in New York
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