Interference and Derivation Proceedings

Pre-AIA Interference — MPEP 2301 First-to-invent system: two parties claim same invention, priority determined by who invented first. Count: the interfering subject matter. Junior party: later filing date — bears burden of proof. Senior party: earlier filing date — presumed to have priority. Determined by conception + reduction to practice + diligence.

AIA Derivation Proceedings — 35 USC 135 / MPEP 2310 Replaced interference for applications with effective filing date on or after March 16, 2013. Purpose: determine if inventor named in earlier-filed application derived invention from inventor in later-filed application. NOT about who invented first — about whether invention was stolen/derived without authorization.

Derivation Petition Requirements — MPEP 2312 Must be filed within 1 year of publication of earliest claim in conflicting application that is substantially the same as petitioner's claim. Must allege: (1) same invention; (2) derived from petitioner's inventor without authorization. Must include substantial evidence supporting derivation.

PTAB Derivation Proceedings — MPEP 2311 PTAB institutes and conducts derivation proceedings. Both parties have full participation rights. Discovery available. Final decision by PTAB — appealable to Federal Circuit.

Post-Interference Estoppel — 37 CFR 41.127 / MPEP 2308 A judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have moved for relief on an issue but did not is estopped from taking action in the Office inconsistent with that failure. Adverse judgment against a claim is a final Office action requiring no further action by the examiner. Key rule: estoppel covers both issues actually raised AND issues that could have been raised.

Secrecy Order Cases — MPEP 2306 Interference will not be declared involving an application under a secrecy order. Applicant under secrecy order may suggest interference but USPTO will not act while order remains in effect.

First-Inventor-to-File — AIA AIA system: first inventor to file wins, with grace period for own disclosures. Derivation proceeding only applies when invention was actually derived — not when two inventors independently developed same invention.