Shining a spotlight on the new America Invents Act, the Patent Trial and Appeal Board’s March 20 decision was a first-ever derivation decision. The decision which came in a proceeding requested by window maker Andersen Corp. also provides useful insights to patent owners and potential challengers.
In the decision, the PTAB emphasized the point of novelty, indicating that companies should do the same when filing. The PTAB was in search of corroborating evidence in the Andersen case and although there is no timing requirement for derivation proceedings, the timing of the decision did not stray far from the inter partes review track. The final decision came almost one year to the day from institution of the proceeding.
One open question remaining after the decision relates to a higher burden of proof. GED argued that Andersen should be required to prove derivation by “clear and convincing” evidence. While the AIA doesn’t specify which evidentiary standard should be used in derivation proceedings, the PTAB’s decision suggests parties should expect it will be preponderance of the evidence, said Finnegan attorney Anthony Hartmann.