Derivation Proceeding (DER)
The DER proceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.
Cardinal can help you with any of the following in preparing the request for the DER:
- Monitor your competition and identify competitor patents as they issue
- Search and Analysis to identify which application or patent to be disputed based on your claims
- In compliance with Regulatory and Statutory Requirements, assist in preparing DER documents
- Assist in submitting DER
AIA Post-Grant Procedure At PTAB
While the United States Patent and Trademark Office (USPTO) processes the Ex Parte Reexamination (EPR) Request, the Patent Trial and Appeal Board (PTAB) conducts trials, including Inter Partes Review (IPR), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBM), and Derivation Proceeding (DER), hears appeals from adverse examiner decisions in patent applications and reexamination proceedings, and renders decisions in interferences.
The procedural requirements for filing petitions for the IPR, PGR, TPCBM, and DER at the PTAB’s Patent Trial and Appeal Board End to End (PTAB E2E) and the Patent Review Processing System (PRPS) can be summarized as follows:
The first step in the process for IPR, PGR, and TPCBM at the PTAB E2E, and DER at PRPS is submission of a proper petition.
- Click on the “New Petitions” tab
- Select “Create New Petition”
- Select the relevant proceeding on the following screen, and
- Enter the information for the petition.
Once a petition is submitted via PTAB E2E /PRPS, a PTAB will review the petition for regulatory and statutory compliance.
The regulatory requirements under 37 CFR 42.4, 6, such as page limits, font size, signature, and identification of lead and back-up counsel that must be met. If there are regulatory defects, the PTAB will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition will receive a notification by email giving an opportunity to correct the regulatory defects.
While the petition will be accorded the filing date of the original submission, the regulatory defect must be corrected within one week. If the defect is not corrected within one week, the petition will be forwarded to a PTAB judge who may initiate a conference call and/or issue an order to show cause, and terminated if the petitioner fails to respond to such an order.
The statutory requirements requirement for all these proceedings are very similar, except for the DER.
IPR, PGR, and TPCBM: The top statutory requirements under 35 USC 135(a), 312(a), and 322(a) that must be met for IPR, PGR, and CBM petitions to be accorded a filing date:
- Appropriate fee successfully paid,
- Identification of the patent and the specific claim(s) being challenged,
- Identification of the real party in interest,
- Copies of the patents and printed publications relied upon in the petition, and
- Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.
Derivation Proceeding (DER): The top statutory requirements under 35 USC 135(a), 312(a), and 322(a) that must be met for the DER:
- Appropriate fee successfully paid,
- Identification of the petitioner’s pending application,
- Identification of the respondent’s earlier filed patent or application, and
- Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.
If any requirement is not met, the petition is incomplete, and petitioner will be notified as follows:
- The paralegal may call the individual who filed the petition and explain the deficiency or the defect.
- The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email.
- The deficiency may be corrected within one month and the petition will be accorded the filing date of the new submission.
- If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees – the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).
- The IPR request fee (§ 41.15(a)(1)): $9,000
- The IPR post-institution fee (§ 41.15(a)(2)): $14,000
- Excess claims fee ($ 200 for each claim in excess of 20) for requesting 5 claims in excess of 20 (§ 41.15(a)(3)): $1,000
- Post-institution excess claims fee ($ 400 for each claim in excess of 15) for requesting 10 claims in excess of 15 (§ 41.15(a)(4)): $4,000
- Total: $28,000
If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and the patent owner/respondent will receive a copy via regular mail.
The following are the top 10 common errors noticed in the Petitions:
- Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart;
- Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section;
- Exhibits do not match the documents listed in the Exhibit List;
- Failure to identify related matters or provide a statement that there are no related matters;
- Exhibits are not sequentially numbered in the 1001-1999 range;
- Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;
- Margins less than 1 inch as required by § 42.06;
- Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a);
- The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and
- The petition and supporting documents are served on the patent owner later than the filing of the petition.