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 2009 would simply be derivation interferences by another name. However, a close reading reveals differences. In this Analysis, Charles Gholz comments on what he sees as the important differences between the two proceedings. He writes:
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.
However, that will apparently not be the case when an applicant wins a derivation proceeding. In the first place, the title of proposed 35 USC 135(a) is "DISPUTE OVER RIGHT TO PATENT," and its first sentence says that "An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent...." (Emphasis supplied.) Moreover, that subsection goes on to say that, if certain preconditions are met, "the Director shall institute a derivation proceeding for the purpose of determining which applicant [sic; this clearly should be "which party," since one party may be a patentee] is entitled to a patent" (emphasis supplied); that "in any proceeding under this subsection, the Patent Trial and Appeal Board [hereinafter referred as "the PTAB"]…shall determine the question of the right to patent" (emphasis supplied); and that "the Patent Trial and Appeal Board... shall issue a final decision on the right to patent." (Emphasis supplied.) So, if an applicant wins a derivation proceeding, that will apparently be the end of the matter. Since the PTAB has issued a "final decision on the right to patent," how could a mere examiner subsequently say otherwise?
Will the PTAB Be Reviewing Settlement Agreements?
Proposed 35 USC 135(b) in both versions of the bill is based on present 35 USC 135(c). However, it differs radically from the present statute in that it says that "Parties to a derivation proceeding may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute [in each claim of each party?]" and that the PTAB "shall take action consistent with the agreement" (emphasis supplied) "[u]nless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record"! So, the APJs are apparently going to have to compare the parties' settlement agreement with "the evidence of record."
But suppose the parties agree right off the bat, before any evidence has been submitted. Does this mean that the parties will have to put in evidence on the derivation/inventorship issue? And suppose the parties agree (either honestly or dishonestly) to "split the baby"–i.e., that one party is entitled to a patent on its claims X and Y and that the other party is entitled to a patent on its claims A and B. Will the parties have to persuade the (always suspicious) APJs that their decision is in accordance with the governing rules on inventorship (which a wise district court judge once termed "one of the muddiest concepts in the muddy metaphysics of the patent law.")?
(footnotes omitted)