Section 3 of the America Invents Act (AIA) provides modifications to the current rules on derived patents (subsection h) and on derivation proceedings (subsection i).Derived patents (35 U.S.C § 291) – The amended §291 allows a patent owner relief via civil suit against the owner of another patent having an earlier filing date and claiming the same invention if the earlier filed patent was derived from the invention claimed by the inventor seeking relief.An action under section 291 must be filed within 1 year of the issuance of the first patent.
Derivation Proceedings (35 U.S.C. § 135) – Effective 16 March 2013, 35 U.S.C. § 135, which was formerly devoted to interference proceedings, is replaced under the AIA with the amended rules for derivation proceedings.This section applies to applications with a priority date more than 18 months after date of enactment (i.e. a priority date after 16 March 2013).Derivation proceedings must be started by petition within one year of publication of a claim that is the same or substantially the same as the earlier application’s claim to the invention.Patent Trial and Appeal Board (PTAB; formerly the BPAI) can correct inventorship of patents or applications at issue.
The PTAB can defer action on a petition to institute derivation proceedings of up to 3 months after the issuance of a patent.
Section 3(h). Derived Patents
(b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.’’.
(2) CONFORMING AMENDMENT.—The item relating to section 291 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: ‘‘291. Derived patents.’’
Section 3(i). Derivation Proceedings
DERIVATION PROCEEDINGS.—Section 135 of title 35, United States Code, is amended to read as follows:
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.— In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of derivation.
(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal H. R. 1249—7
Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation.
(e) SETTLEMENT.—Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
(f) ARBITRATION.—Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.’’