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Patent Trial and Appeal Board Derivation Proceeding Patent Applications

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

Jones Day

Prior Conception Defeats Otherwise Sufficient Derivation Showing

Jones Day on

In its second-ever Final Written Decision in a derivation proceeding, the Patent Trial and Appeal Board (“PTAB”) determined that a patent application for a biocidal composition and method of producing said biocidal...more

Morgan Lewis

Derivation Proceedings

Morgan Lewis on

A petitioner can use derivation proceedings to challenge the inventorship of an invention claimed in a published pending application or an issued patent. Only applications and patents having at least one claim with an...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

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