On March 21, 2018, the Patent Trial and Appeal Board (“PTAB”) instituted the first AIA derivation proceeding to determine whether patent claims to a window frame component should be canceled because they were derived from others not listed as inventors.

The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings. Derivation proceedings may be filed 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. Accordingly, the petitioner must file a patent application before or with a derivation petition and the petitioner’s patent application must include at least one claim that is the same or substantially the same as a claim in the earlier application.

Only about fourteen petitions for institution of derivation proceedings have been filed since such proceedings became available on March 16, 2013. However, in the five years since these proceedings have been available, this petition is the first to trigger the institution of a trial.

The petition is due by the earlier of (1) one year from the date on which a patent based on the earlier application was granted or (2) one year from the date on which the earlier application was published. The PTAB will institute proceedings if they determine the petition provides substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.

In Andersen Corporation v. GED Integrated Solutions, Inc. (DER2017-00007), Andersen Corp. alleged that its employee Sammy Oquendo was the true inventor of a spacer frame unit, which provides a hermetic seal on windows. Andersen Corp. alleges that, in 2009, Mr. Oquendo developed prototypes of the spacer frame unit and GED learned of this invention during a glass symposium. Interestingly, Andersen alleged that Mr. Oquendo should be an inventor of each of the claims—asserting, in effect, 22 different derivations in the same proceeding.

After the PTAB panel reviewed the record evidence, including the numerous interactions between Mr. Oquendo and employees of GED, the Board concluded that there was substantial evidence to support Andersen’s claim that each of claims 1-22 of U.S Patent No. 9,428,953 was derived from Mr. Oquendo. Accordingly, the derivation proceeding was instituted and there will finally be some clarity regarding the conduct of a derivation proceeding.

If the Board concludes that claims from the earlier-filed application were derived without authorization and the application is pending, the Board’s decision acts as a final refusal by the USPTO of the derived claims. If a finding of derivation is made regarding claims of a patent and the Board’s decision is not timely appealed to the Federal Circuit, the Board’s decision results in cancellation of those claims.