By Charles L. Gholz2
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...