Someone Stole My Invention and Filed a Patent Application. Episode 82

What Are Derivation Proceedings?

In this episode, I’m going to talk about derivation proceedings. Let’s say you came up with an invention and told your friend about it. You file a patent application, and then, all of a sudden, you discover that your friend has also filed a patent application for exactly what you invented. You know that your friend didn’t actually invent it—they simply took your idea and are now trying to get a patent for it.

That’s what a derivation proceeding is for. You’re asserting that your friend derived their invention from you. Maybe they didn’t outright steal it, but you both worked on something together, and then your friend filed an application excluding you as an inventor without your knowledge. In that case, you should rightfully be listed as a co-inventor on the patent.

First to File vs. First Inventor to File

You’ve probably heard that the U.S. operates under a first-to-file system, meaning that the first person to file a patent application has rights over anyone who files later. It wasn’t always this way. The U.S. used to have a first-to-inventsystem, meaning that if you could prove you invented something first—even if you filed later—you could claim the patent rights.

Under the first-inventor-to-file system we now use, it’s not just about who files first—it’s about who actually invented the idea. You can’t simply file first and obtain patent rights if you never invented the subject matter.

Previously, under the first-to-invent system, disputes were handled through interference proceedings. However, since switching to the first-inventor-to-file system, interference proceedings have been replaced with derivation proceedings.

How Do Derivation Proceedings Work?

If you are the true inventor, you can’t simply file a complaint to stop the other person’s application. Instead, you must have your own patent application on file. Once your application is on file, you can petition the Patent Office to institute a derivation proceeding.

You only have one year from the date the other person’s patent application becomes public to file your petition. Additionally, their application must contain claims that are the same or substantially the same as your claims.

Derivation proceedings can also be brought in court rather than at the Patent Office, but the rules and timelines are different. In this episode, I’m focusing on how the process works at the Patent Office.

Filing a Petition for a Derivation Proceeding

When you file your petition, you must provide evidence—such as an affidavit—showing that there was communication between you and the other person regarding the invention. Currently, the fee to file a derivation proceeding is $400, not including attorney fees.

To establish substantial evidence of derivation, you may submit emails, documents, or other proof that you disclosed the invention to the other party. For example, if you have an email where your friend says, “That’s a really cool invention—you’re so creative! I never would have come up with that myself,” that would be strong evidence that your friend is not the actual inventor.

What Can the Patent Trial and Appeal Board Do?

The Patent Trial and Appeal Board (PTAB) has several options in a derivation proceeding:

• It may correct inventorship by adding your name to the application.

• It may refuse to allow the other person’s application to proceed.

• If the patent has already been granted, it may cancel the patent entirely.

The way the PTAB decides the case is through a mini-trial. The process follows similar procedures to those discussed in previous episodes:

• The other party can respond to your petition or amend their claims.

• You can file a reply to their response.

• They can file a response to your opposition.

• Both sides may present testimony and witnesses.

• There may be motions to exclude evidence.

• An oral hearing may be requested.

  
  

At the end of the process, the PTAB will issue a decision on who is the rightful inventor.

Final Thoughts

Throughout this episode, I’ve referred to “your friend” as the person who stole your invention, but in reality, it could be anyone—likely not a real friend if they’re trying to take credit for your idea. I’m using the term “friend” to keep things simple.

There are many important details in derivation proceedings that I’ve glossed over, but your patent attorney should be familiar with them. My goal here is to provide enough information so that if you believe someone stole your invention and filed a patent application, you know that there is a process available to address the situation. However, it must be handled correctly to be resolved in your favor.

I’m Adam Diament, and until next time, keep on inventing!