Derivative and Interfering Procedures in U.S. Patent Law

In real life, we may encounter this situation: A invented a medical device, and then A discussed the invention with collaborator B. Soon after, A found that B had submitted an invention patent application for the invention, which was very similar or even identical to A's invention. This situation usually gives rise to disputes over the qualification of inventors in the United States, some of which can be resolved through negotiation, while others need to be resolved through contentious proceedings.

Depending on whether the dispute involves a patent application that has already been granted or a patent application that has not yet been granted, the omitted inventor has two options to resolve the dispute over the qualification of the inventor. If a patent application is involved and the patent application is being examined by the United States Patent and Trademark Office (USPTO), the omitted inventor may request a correction of the inventor's qualifications to the USPTO. If a patent application has been granted, the missing inventor may file a request for correction in the U.S. District Court. However, the missing inventor usually cannot ask the court to resolve the dispute over the qualification of the inventor in the patent application that has not been authorized, but the inventor can wait for the relevant patent application to be authorized before challenging the qualification of the inventor to the court.

The American Inventions Act (AIA) simplifies the process of correcting an inventor's eligibility at the USPTO. Although the AIA changed the first-to-invent system in U.S. patent law, the Act still emphasized the importance of patent originality and created a derivative process to ensure that the inventor's qualifications could be corrected as necessary. The derivation procedure is to ensure that the person who first filed the patent application is the real inventor. The missing inventor can file his own patent application, contain claims that are exactly the same (or almost exactly the same) as the existing patent application, and then request the USPTO to initiate the derivation procedure.

The first-to-invent system in the AIA U.S. patent system will be changed to a first-to-file system. The "effective filing date" of the claimed invention is defined as the actual filing date of the application. A consequential change would be that the current "conflict procedure" (for interference, the procedure for identifying who is the prior inventor) would be abolished and replaced by a "derivative procedure" (for derivation, identifying whether the prior applicant's invention originated from the later-filed inventor).

Derivative patents are described in section 291 of the U.S. Patent Act.

(a) General provisions

The patent owner has the right to bring an action against the owner of another patent with an earlier valid application date and the same claim as its patent, provided that the invention claimed by the earlier patent is derived from the invention claimed by the patent owner who filed the lawsuit.

(B) Limitations to the institution of proceedings

An action under this section must be brought within one year from the date on which the patent certificate for the claimed derivative invention was first granted, and the name of the inventor or co-inventors of the derivative invention must be named.

If the relevant patent application was filed before March 16, 2013, the missed inventor can resolve the inventor qualification dispute through the interference procedure at the USPTO. However, the interference procedure has not been widely used in the settlement of inventor qualification disputes. One of the reasons is that there are some substantive conflicts between the qualification procedure of the inventor and the interference procedure. The qualification of the inventor depends on the originality, and the interference program mainly determines the priority of the invention. The problems raised by these two procedures are different. The problem to be solved in determining the qualification of the inventor is who is the inventor, while the problem considered in the interference procedure is who is the first inventor. The two procedures are also concerned with different facts. In the determination of the qualification of the inventor, the concern is who has made a creative contribution to the invention, while in the interference procedure, the concern is who first obtained the idea and/or put it into practice.

In the proceedings, the missing inventor must present clear and convincing evidence to prove his argument. In derivative proceedings, the default standard of evidence is the preponderance standard of evidence, which is much lower than the clear and persuasive standard of evidence required by the proceedings.

Another disadvantage of filing a lawsuit in the district court is that it takes a lot of time and money. A survey conducted by PricewaterhouseCoopers last year showed that the average time from the filing of a patent case in the United States to the first day of trial is two and a half years. In addition, according to the American Intellectual Property Law Association, the average cost of each patent case to the end of evidence collection is $1.6 million, while the average cost to the final judgment is as high as $2.8 million. Relatively speaking, the derivative program in AIA has the advantages of fast speed and low cost. Although the U.S. patent law does not provide detailed requirements for derivative proceedings, the PTAB is expected to render a final judgment within one year after the derivative proceedings are filed. In the derivative procedure, the cost of filing a pleadings is only $400, and the time required for the entire derivative procedure is estimated by the USPTO to be about 700 hours. Based on the average hourly cost of $371 provided by the USPTO, the cost of the derivative program is around $260000. The AIA makes the derivation procedure a simple and quick way to correct the qualifications of the inventor. Compared with the previous interference procedure, the derivative procedure provides a clearer process; compared with the litigation procedure, the derivative procedure has the advantages of low evidence standard, less cost and short time.

Press Release Source:http://www.nipso.cn/onews.asp?id=20380