MPEP § 2310 — MPEP § 2310
Current through: 2022-07-01

2310-Derivation Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2300 

 Section 2310 
 

 
 
 
 
 
 2310 Derivation Proceedings [R-08.2017]

 A derivation proceeding is a trial proceeding under
 35 U.S.C.
 135 conducted at the Board to determine whether (i) an inventor named
 in an earlier application derived the claimed invention from an inventor named in the
 petitioner’s application, and (ii) the earlier application claiming such invention was
 filed without authorization. Derivation proceedings are only applicable to applications for
 patent, and any patent issuing thereon that are subject to first-inventor-to-file
 provisions of the America Invents Act (AIA). An applicant subject to the
 first-inventor-to-file provisions may file a petition to institute a derivation proceeding
 with the Board. 
 

 
 2310.01 Statutory Basis [R-08.2017]

 
 35 U.S.C. 135 
 Derivation Proceedings. 

 
 (a) INSTITUTION OF PROCEEDING.— 
 
 (1) IN GENERAL.— An applicant for patent may file a
 petition with respect to an invention to institute a derivation
 proceeding in the Office. The petition shall set forth with particularity
 the basis for finding that an individual named in an earlier application
 as the inventor or a joint inventor derived such invention from an
 individual named in the petitioner’s application as the inventor or a
 joint inventor and, without authorization, the earlier application
 claiming such invention was filed. Whenever the Director determines that
 a petition filed under this subsection demonstrates that the standards
 for instituting a derivation proceeding are met, the Director may
 institute a derivation proceeding.
 

 
 

 
 *****

 
 (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.
 

 
 

 

 
 2310.02 Definitions [R-08.2017]

 
 37 CFR 42.2 Definitions. 

 The following definitions apply to this part: 

 Affidavit means affidavit or
 declaration under § 1.68 of this chapter. A transcript of an ex
 parte deposition or a declaration under 28 U.S.C. 1746 may be used as an
 affidavit. 
 

 Board means the Patent Trial and Appeal Board. Board means a panel
 of the Board, or a member or employee acting with the authority of the Board,
 including:
 

 (1) For petition decisions and interlocutory
 decisions, a Board member or employee acting with the authority of the Board. 
 

 (2) For final written decisions under 35 U.S.C.
 135(d), 318(a), and 328(a), a panel of the Board. 
 

 Business day means a day other
 than a Saturday, Sunday, or Federal holiday within the District of Columbia.
 

 Confidential information means trade secret or other confidential
 research, development, or commercial information. 
 

 Final means final for the purpose
 of judicial review to the extent available. A decision is final only if it disposes
 of all necessary issues with regard to the party seeking judicial review, and does
 not indicate that further action is required. 
 

 Hearing means consideration of the
 trial. 
 

 Involved means an application,
 patent, or claim that is the subject of the proceeding. 
 

 Judgment means a final written
 decision by the Board, or a termination of a proceeding. 
 

 Motion means a request for relief
 other than by petition. 
 

 Office means the United States
 Patent and Trademark Office. 
 

 Panel means at least three members
 of the Board. 
 

 Party means at least the
 petitioner and the patent owner and, in a derivation proceeding, any applicant or
 assignee of the involved application. 
 

 Petition is a request that a trial
 be instituted. 
 

 Petitioner means the party filing
 a petition requesting that a trial be instituted. 
 

 Preliminary Proceeding begins with
 the filing of a petition for instituting a trial and ends with a written decision as
 to whether a trial will be instituted. 
 

 Proceeding means a trial or
 preliminary proceeding. 
 

 Rehearing means reconsideration. 
 

 Trial means a contested case
 instituted by the Board based upon a petition. A trial begins with a written decision
 notifying the petitioner and patent owner of the institution of the trial. The term
 trial specifically includes a derivation proceeding under 35 U.S.C.
 135 ; an inter partes review under Chapter 31
 of title 35, United States Code; a post-grant review under Chapter 32 of title
 35,United States Code; and a transitional business-method review under section 18 of
 the Leahy-Smith America Invents Act. Patent interferences are administered under part
 41 and not under part 42 of this title, and therefore are not trials. 
 

 

 

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 2301-Interference Proceedings 
 2301.01-Statutory Basis 

 2301.02-Definitions 

 2301.03-Interfering Subject Matter 

 2301.04-Applicability of 35 U.S.C. 102(g) to Applications filed on or after March 16, 2013 

 
 

 2302-Consult an Interference Practice Specialist 

 2303-Completion of Examination 
 2303.01-Issuance and Suspension 

 2303.02-Other Outstanding Issues with Patents 

 
 

 2304-Suggesting an Interference 
 2304.01-Preparation of an Application for Interference 
 2304.01(a)-Interference Search 

 2304.01(b)-Obtaining Control Over Involved Files 

 2304.01(c)-Translation of Foreign Benefit Application 

 2304.01(d)-Sorting Claims 

 
 

 2304.02-Applicant Suggestion 
 2304.02(a)-Identifying the Other Application or Patent 

 2304.02(b)-Counts and Corresponding Claims 

 2304.02(c)-Explaining Priority 

 2304.02(d)-Adequate Written Description 

 
 

 2304.03-Patentee Suggestion 

 2304.04-Examiner Suggestion 
 2304.04(a)-Interfering Claim Already in Application 

 2304.04(b)-Requiring a Claim 

 2304.04(c)-Rejections Based on Disclaimer 

 
 

 2304.05-Common Ownership 

 
 

 2305-Requiring a Priority Showing 

 2306-Secrecy Order Cases 

 2307-Action During an Interference 
 2307.01-Ex Parte Communications 

 2307.02-Access to Related Files 

 2307.03-Suspension of Related Examinations 

 2307.04-Additional Parties to Interference 

 2307.05-Board Action on Related Files 

 2307.06-Action at the Board 

 
 

 2308-Action After an Interference 
 2308.01-Final Disposal of Claims 

 2308.02-Added or Amended Claims 

 2308.03-Estoppel Within the Office 
 2308.03(a)-Losing Party 

 2308.03(b)-No Interference-in-Fact 

 2308.03(c)-No Second Interference 

 
 

 2308.04-Office Procedure Following Decision by the U. S. Court of Appeals for the Federal Circuit 

 
 

 2309-National Aeronautics and Space Administration or Department of Energy 

 2310-Derivation Proceedings 
 2310.01-Statutory Basis 

 2310.02-Definitions 

 
 

 2311-Consult a Technology Center Practice Specialist 

 2312-Board May Assume Jurisdiction 

 2313-Action Once a Derivation Proceeding is Instituted 

 2314-Action at the Board 

 2315-Action After a Derivation Proceeding is Decided 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:45