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3 Things to Know as First Patent Derivation Gets Underway

March 29, 2018

Fenwick IP lawyer Jennifer Bush talked to Law360 about the Patent Trial and Appeal Board’s first-ever derivation proceeding.

Bush explained the proceeding is a rarely used type of patent review that was established by the America Invents Act, and that it is used to determine whether an issued patent was derived from another person’s work.

She noted that the unique facts needed to trigger a derivation proceeding make it unlikely that the proceeding will become widespread, but the PTAB’s decision to institute a review in Andersen v. GED Integrated Solutions could convince some petitioners to consider derivations.

"Having a positive example might encourage people who have been hesitant because a petitioner had never gotten one instituted at all. This might be a tipping point for anyone considering it," Bush said.

While there are limited scenarios where a derivation may come into play, Bush told Law360 that the Andersen decision “provides a great road map for people to follow going forward."

She also mentioned that the briefing schedule for derivations seems similar with the timeline for inter partes reviews, which must be completed in 12 months.

The full article is available on Law360 (subscription required).​