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:
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.
Once a petition is submitted via PTAB E2E /PRPS, a PTAB will review the petition for regulatory and statutory compliance.
If any requirement is not met, the petition is incomplete, and petitioner will be notified as follows:
The IPR/PGR/TPCBM post-institution fee is for each claim in excess of 15 claims and the IPR/PGR/TPCBM request of each claim in excess of 20 claims. For example, for a petition that is challenging 25 claims, the following fees are required on filing:
The Office will notify the petitioner of any fee deficiencies. When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date.
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:
Cardinal Intellectual Property is the leading IP services company in the United States. Cardinal offers an experienced team of over 150 U.S.-based research professionals, more than half holding Masters, PhDs, and/or JDs. Be confident that your IP services provider is secure with expertise in Pre- and Post-Grant Patent Strategies at the USPTO/PTAB and a wide array of paralegal support services, adhering to high quality standards and supporting fast turnaround times. Our paralegal teams manage hundreds of thousands of matters for clients large and small. Well-versed in both patent and trademark procedures, our staff is trained to accurately and efficiently manage your intellectual property matters through well-documented, best practice processes. All Cardinal paralegals are based in the United States. Because we do not outsource our paralegal services, Cardinal is able to maintain the highest standards of confidentiality and security. Our technology platforms incorporate rigorous security and data protection standards. As an additional level of protection, we maintain confidentiality for our clients using the same diligence and procedures as a law firm.