News & Analysis as of

Patent Trial and Appeal Board Derivation Proceeding America Invents Act

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

Miller Canfield on

The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

White & Case LLP on

In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Kilpatrick

5 Key Takeaways - PTAB Trials Insights and Strategies-Leveraging Recent Development at the PTAB

Kilpatrick on

Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more

McDermott Will & Schulte

A Window into PTAB Derivation Proceedings

In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more

Jones Day

Andersen: A Window into Derivation Proceedings before the PTAB

Jones Day on

Recently, the PTAB issued its first ever final written decision in a post-AIA derivation proceeding in Andersen Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 57 (PTAB Mar. 20, 2019), finding that...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - June 2018

Orange Book-Listed Patents Prove to Be Popular Targets for AIA Challenges - On March 13, 2018, Chief Administrative Patent Judge Ruschke of the Patent Trial and Appeal Board (PTAB) released findings of the Patent Office’s...more

Mintz - Intellectual Property Viewpoints

Why No One is Talking About Derivation Proceedings

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings...more

McDermott Will & Emery

Proof of Conception of Invention Is Not Confined to Any Formula - Sanofi-Aventis v Pfizer Inc.

Analyzing whether proof of conception of a DNA segment invention required a showing of the entire polynucleotide sequence, the U. S. Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and...more

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