This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.

Identical Inventions Developed By Two Separate Inventors

One of the main changes adopted by the America Invents Act relates to determining how to award patent applications when separate inventors develop identical or similar inventions. Under prior U.S. law, patents were awarded to the first inventor(s) to in fact invent a particular new or novel invention, irrespective of when those inventors filed a corresponding patent application. As such, in isolated cases, an inventor may have invented his or her invention prior to a filed patent application on the same subject matter. During Examination, the inventor would be allowed an opportunity to establish his or her earlier invention by affidavits, or by institution of an “interference” proceeding, discussed briefly below. However, under the America Invents Act, patents are awarded to applicants on a “first inventor to file” basis. In other words, if two inventors independently conceive of an invention, the first-filed patent application will be awarded a patent, irrespective of whether the inventor listed on that application in fact conceived of his or her invention first. The first “true” inventor (i.e., the inventor of an earlier-conceived invention but who was not a first filer of a patent application) would be denied a patent. As such, it is increasingly important to file patent applications quickly after conception, to reduce the risk of subsequent inventors foreclosing patent rights.

Inventors who believe that a first-filed application was not independently invented, but rather was derived from the inventive activities of that inventor, can now file a “derivation” proceeding that is heard by an administrative court of the U.S. Patent and Trademark Office. The derivation proceeding allows the inventor to prove, in a small-scale trial setting, that an earlier patent filer in fact derived the subject matter of a particular application from his or her own work, resulting in invalidation of that earlier-filed patent. The derivation proceeding generally requires documentary and/or testimonial evidence of the earlier patent filer’s’ access to the first inventor’s invention and subsequent similarity between the subject matter of the allegedly derived application and the subject matter to which that earlier patent filer had access.