35 U.S.C. § 135 — Derivation proceedings

(a) Institution of Proceeding. (1) In general: A patent applicant may file a petition asking the Patent Office to start a "derivation proceeding" over an invention. The petition must explain in detail why the applicant believes an inventor named in an earlier-filed application derived (took) the invention from an inventor named in the petitioner's own application, and that the earlier application was filed without that person's authorization. The Director decides whether the petition meets the standards for starting such a proceeding, and may choose to start one. (2) Time for filing: A petition covering an invention that is the same as, or substantially the same as, a claim in a patent granted on an earlier application (or in an earlier application once published) can only be filed during the 1-year period after the patent was granted or the earlier application was published, whichever came first. (3) Earlier application: An application only counts as "earlier" relative to another application if a claim to the invention in it has an effective filing date earlier than any matching claim's effective filing date in the other application. (4) No appeal: The Director's decision on whether to start a derivation proceeding is final and cannot be appealed. (b) Determination by Patent Trial and Appeal Board. In a proceeding that has started, the Patent Trial and Appeal Board decides whether the inventor named in the earlier application derived the claimed invention from the inventor named in the petitioner's application without authorization. Where appropriate, the Board may correct the naming of the inventor on any application or patent at issue. The Director must issue regulations setting standards for these proceedings, including requiring both sides to submit enough evidence to prove or disprove a derivation claim. (c) Deferral of Decision. The Board may put off acting on a derivation petition until 3 months after the Director issues a patent covering the claimed invention at issue. The Board may also defer action on a petition, or pause a proceeding already started, until a related proceeding under chapter 30, 31, or 32 involving the earlier applicant's patent is finished. (d) Effect of Final Decision. If the Board's final decision goes against claims in a pending patent application, that counts as the Office's final refusal of those claims. If the decision goes against claims in an already-issued patent, and no appeal or other review has been or can be taken, those claims are canceled, and the cancellation must be noted on copies of the patent given out afterward. (e) Settlement. Parties to a derivation proceeding may end it early by filing a written statement agreeing on the correct inventor of the disputed invention. The Board must act consistent with that agreement unless it finds the agreement inconsistent with the evidence on record. Any settlement or understanding must be filed with the Director. At a party's request, it will be treated as confidential business information, kept separate from the patent or application file, and shared only with government agencies on request, or with others who show good cause. (f) Arbitration. Parties to a derivation proceeding may agree to settle the dispute, in whole or part, through arbitration, within a time set by the Director's regulations. The arbitration follows the rules in title 9, except where those conflict with this section. The parties must notify the Director of any arbitration award; between the parties, that award settles the issues it covers, but it cannot be enforced until the Director is notified. Arbitration does not stop the Director from separately deciding whether the inventions involved are patentable.