First derivation proceeding ever – ANDERSEN v. GED

The American Invents Act made major revisions to the patent law of the Untied States. One of the largest changes was to switch the priority in which patents are awarded to inventors. Prior to the American Invents Act, the United States had a first to invent system, which means that the first inventor to invent an invention was entitled to a patent. The first to invent system meant that an inventor could snatch a patent application away from a patent applicant, if the inventor could prove their conception date predated the conception date of the patent applicant. If there was a question of who invented first the United State patent and Trademark Office would have an interference proceeding, also known as a priority contest. An interference proceeding was an inter partes proceeding to determine the priority issues of multiple patent applications.

After the America Invents Act the Untied States changed to a first to file system for patents. This means that the first inventor of an invention to file a patent application will be granted a the patent, even of another inventor conceived the invention first. The first to file system rewards inventors that promptly disclose their inventions to the public, rather than keeping the inventions secret.

The first to file system still requires that the patent applicant actually be the inventor of an invention. A patent will not be awarded to someone who learned of an invention, from the inventor and then claimed the invention as their own. When someone other than the inventor claims an invention in a patent application the inventor can request a derivation proceeding to establish who actually invented an invention. Derivation proceedings are similar to interference proceedings, both proceedings determine who will be the inventor named on a patent, but there are some differences. Derivation proceedings determine the identity of the true inventor while interference proceedings determine who invented first.

Derivation proceedings are overseen by the Patent Trial and Appeal Board of the United States Patent and Trademark Office. A derivation proceeding starts with the filing of a petition under 35 U.S.C. § 135. The petitioner must file their petition within one year of the publication date of the patent application they claim was derived from their invention. If the Patent Trial and Appeal Board grants the petition a trial will be held to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. Derivation requires both earlier conception by the petitioner derivation as well as communication of the conception to the respondent. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

Since the American Invents Act was passed no petitions for derivation proceedings were granted until Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 in March 2018. This will be the first derivation trial held since the procedure was adopted 5 years ago. In this case the Petitioner is a window manufacturer who was collaborating with the respondent on a project. During the course of the collaboration one of Anderson’s employees told a GED employee about an invention related to window insulation. GED took the information about the invention and filed a patent application. Anderson presented enough evidence in their petition to the Patent Trial and Appeal Board that a derivation proceeding will be held. This is a good case to watch because it is creating new precedent.

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