Tag Archives: Derivation

Court Rejects Theory Of Derivation Based On FDA Requirement

The Federal Circuit decision in Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC may be more interesting for what Mylan argued than for what the Federal Circuit decided. However, it could be an important decision for pharmaceutical companies who need to innovate in order to satisfy FDA requirements.… Continue reading this entry

The Limited Scope Of The New Derivation Proceedings

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such … Continue reading this entry

USPTO Publishes Final Derivation Rules

Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.… Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

Be Aware Of The Ides Of March

The “first-to-file” provisions of the America Invents Act (AIA) take effect on March 16, 2013. Here, I highlight a few reasons why many applicants will not want their patent applications to be subject to the new version of 35 USC § 102, and why all applicants—and their patent counsel—should be aware of the significance of … Continue reading this entry

A First Look At The Proposed Rules For The New USPTO Patent Trial Proceedings

As I wrote previously, the USPTO has released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the America Invents Act (AIA). The proposed rules will be published in seven separate Federal Register Notices that are due out later this week: … Continue reading this entry

The First-To-File Poison Pill

Now that we’ve been studying the Leahy-Smith America Invents Act for a few weeks, some of its subtle intricacies are coming to light. One of the more complex provisions relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102.… Continue reading this entry

The New Derivation Proceedings Deadlines--More Traps For The Unwary?

The new derivation proceedings enacted by the Leahy-Smith America Invents Act include one-year deadlines for instituting derivation proceedings, based on the publication or issue date of a relevant patent claim. To the extent that these deadlines were intended to mirror 35 USC § 135(b), they may include an unintended trap for the unwary based on … Continue reading this entry