Would Derivation Proceedings Be The Same As Derivation Interferences?¹

Introduction³

It has been generally assumed that the “derivation proceedings” that would be created by both the House and Senate versions of the Patent Reform Act of 2009⁴ would simply be derivation interferences by another name.  However, a close reading of the relevant portions of the two bills reveals that there would be a few significant differences--some clearly intended and some probably not intended.  In this article I will comment on what I see as the important differences between the two proceedings.  I solicit comments from readers—both comments disagreeing with my analysis and comments asserting that there are additional significant differences between the two proceedings.

Is an Applicant Winner of a Derivation Proceeding Automatically Entitled to Obtain a Patent?

An applicant winner of a derivation interference is clearly not automatically entitled to obtain a patent.  Its application is returned to the examining corps for post-interference ex parte prosecution, and the examiner to whom it is assigned is at perfect liberty to enter one or more new grounds of rejection, starting the whole process over.⁵  The theory is that the interference det...